Manual  of  Patent  Law. 


MANUAL 


PATENT   LAW 


WITH  AN 


APPENDIX 


UPON   THE 


SALE  OF  PATENTS 


BY 

William  Edgar  Simonds, 

Counsellor  in  Patent  Causes, 


HARTFORD: 

PUBLISHED     BY    THE    AUTHOR. 

1874. 

AND  BY 

GEO.  W.  SMITH    &   COMPANY, 

95  NASSAU  ST.,  NEW  YORK. 


Entered  according  to  Act  of  Congress,  in  the  year  1874,  by 

William  Edgar  Simonds, 

in  the  Office  of  the  Librarian  of  Congress  at  Washington. 


Smith,  Fowler  &■  Miller, 

Steam  Laiu  and  Mercantile  Printers 

Hartford,  Conn. 


PREFACE. 


CUSTOM  permits  a  writer,  in  his  Preface,  to  project 
himself  toward  his  readers  in  the  use  of  the  personal 
pronoun  of  the  first  person.  Of  that  privilege  I  will  avail 
myself  for  a  little.  Professional  experience  in  the  procur- 
ing of  letters-patent  for  inventions,  and  in  the  conduct  of 
litigation  based  upon  them,  has  made  me  to  know,  that 
the  great  majority  of  inventors,  and  of  other  persons 
interested  in  patents,  eagerly  desire  reliable  information 
as  to  their  rights  and  duties  under  the  law,  and  as  to 
all  questions  affecting  patents. 

The  books  designed  for  the  use  of  that  part  of  the  legal 
profession  devoted  to  patent  practice  are  too  costly  to  be 
practically  within  the  reach  of  the  profession  in  general, 
much  less  within  the  ordinary  means  of  inventors  and 
patentees.  Not  only  this,  but  they  are  written  in  a  ver- 
nacular fully  understood  by  lawyers  only;  and,  being 
devoted  to  a  subject  which  a  truly  learned  judge  has  styled 
"the  metaphysics  of  the  law,"  their  language  is  doubly 
puzzling  to  a  layman. 

This  book  of  mine  is,  obviously,  not  intended  as  an 
exhaustive  treatise  upon  patent  law,  but  as  a  statement 
and  summary  of  the  principles  of  the  law;  and  it  has 
been  prepared  with  a  careful  remembrance  of  the  fact, 
that  a  book  may  be  as  valuable  for  what  it  does  not 
contain  as  for  what  it  does.  The  subject  admits  of  endless 
padding ;  but  I  have  aimed  to  steer  clear  of  that  error. 


VI 


Preface. 


In  stating  principles,  the  exact  language  of  the  courts 
has  been  used,  when  practicable.  Patent  law  is  growing 
and  progressive,  and  I  have  attempted  to  show  its  ad- 
vanced and  later  phases.  All  the  way  through,  a  promi- 
nent aim  has  been,  to  adapt  the  language  to  the  clear 
comprehension  of  those  who  can  not  be  expected  to  be 
familiar  with  the  lawyers'  vernacular.  The  hope  is  ex- 
pressed, that  the  book  may  be  of  use  to  the  profession  in 
general,  as  well  as  to  inventors  and  patentees. 

The  Sale  of  Patents.  Co-equal  with  a  patentee's  de- 
sire to  know  about  his  legal  rights,  is  his  desire  to  know 
how  to  make  his  patent  pecuniarily  profitable.  The  topic 
is  a  commercial  one,  but  of  such  a  nature  that  an  attorney 
in  patent  practice  must  needs  become  fully  conversant 
with  it.  Having  had  frequent  occasion  to  observe  the 
blind  way  in  which  many  inventors  grope  about  in  the 
vain  endeavor  to  sell  their  patents,  and  having  had  equal 
occasion  to  observe  the  methods  followed  by  business  men 
in  dealing  with  the  same  inventions  and  to  become  ac- 
quainted with  skillful  patent  sellers  and  their  methods  of 
procedure,  I  can  but  think  that  the  suggestions  in  the 
part  devoted  to  the  sale  of  patents  will  prove  of  material 
aid  and  assistance  to  those  having  patents  to  dispose  of. 

In  concluding  this  personal  talk,  let  me  say,  that  the 
book  has,  of  necessity,  been  written  at  intervals,  after  the 
close  of  days  of  hard  professional  work,  and  it  can  but 
have  its  faults.  Let  the  reader  be  kind  enough  to  balance 
my  motives  against  my  shortcomings,  and,  if  future  editions 
are  called  for,  I  may  hope  to  amend  toward  that  perfection 
which  I  would  reach. 

W.  E.  S. 

Hartford,   Conn.,  1874. 


Manual  of  Patent  Law 


CHAPTER    I. 

THE  NATURE  OF  A  PATENT  PRIVILEGE. 

MANY,  and  perhaps  the  great  majority  of  inventors 
have  incorrect  ideas  of  the  nature  of  a  patent  privi- 
lege. Starting  from  false  premises,  they  reason  wrongly 
about  various  questions  that  arise,  and  are  never  able  to 
comprehend  why  laws  read  as  they  do,  or  why  the  courts 
make  certain  constructions  of  the  laws.  A  correct  concep- 
tion of  the  nature  of  a  patent  grant,  and  of  the  reasons 
upon  which  the  patent  law  is  based,  will  do  much  to  clear 
up  the  difficulties  of  this  nature  that  often  beset  inventors. 
The  belief  is  very  generally  entertained,  that  inventors 
have  a  natural  right  to  their  inventions,  of  the  same  kind 
given  by  the  statute,  irrespective  of  the  actual  passage  of 
the  law. 

Such  is  not  the  fact. l 

The  right  to  the  exclusive  use  of  an  invention  is  not  a 
natural  right,  —  that  is,  pertaining  to  a  man  in  a  state  of 
nature ;  but,  when  it  exists  at  all,  it  is  a  civil  right,  pertain- 
ing to  man  under  the  protection  of  a  civil  government. 

1     Traite  des  Brevets  D' Invention  :  par  C.  Renottard.     Phillips  on  Patents. 


8  Manual  of  Patent  Law. 


All  will  concede  that  one  natural  right  of  a  man  is,  to 
have  an  equal  chance  with  his  fellows  to  gather  and  amass 
the  goods  of  this  world.  Suppose  two  men,  under  the 
protection  and  control  of  no  human  government,  to  be 
occupying  and  cultivating  tracts  of  land  side  by  side. 
This  would  be  man  in  a  state  of  nature.  For  years  they 
plow,  sow,  and  reap  in  the  same  manner  and  with  the  same 
rude  tools.  Finally  one  of  them  invents  a  plow,  with 
which  he  can  cultivate  twice  as  much  land  in  the  same 
time  as  before,  and  do  it  better.  There  is  no  principle 
of  natural  justice  which  forbids  the  neighbor,  upon  seeing 
how  well  the  plow  works,  from  making  and  putting  to  use 
one  like  it.  The  doing  so  by  the  neighbor  does  not  injure 
the  inventor  in  any  possible  way.  If  the  neighbor  has 
not  the  right  to  make  and  put  to  use  a  plow  like  the 
inventor's,  he  is  shut  off  from  an  equal  chance  with  the 
inventor  of  amassing  wealth,  and  this  when  his  hindrance 
is  no  help  to  the  inventor. 

Not  only  this,  but  the  neighbor,  at  the  time  the  inventor 
made  his  plow,  might  have  already  begun  to  ponder  upon 
the  poor  work  done  by  the  old  plow,  and  set  about  making 
a  better  one,  and  would  have  soon  invented  the  new  plow 
himself,  and  thus  acquired  as  good  a  title  to  the  exclusive 
use  of  it  as  the  prior  inventor, — a  use,  however,  from 
which  he  would  be  debarred  by  a  person  having  no  better 
title  than  himself,  a  thing  that  would  be  clearly  unjust. 

This  last  is  by  no  means  a  merely  suppositious  case;  for 
patent  solicitors  and  Patent  Office  examiners  well  know 
that  the  same  inventions  are  made  over  and  over  again  by 
independent  inventors.  The  writer  has  had  a  great  many 
personal  proofs  of  this  assertion.  The  frequency  with 
which  this  is  done,  would  be  most  surprising,  were  it  not 
another  and  a  recognized  fact,  that  the  mind  is  governed 


Manual  of   Patent  Law. 


by  laws  of  action  just  as  much  as  the  body;  so  that,  given 
a  certain  invention  to  produce,  and  two  minds  of  similar 
knowledge  and  habits  to  produce  it,  they  will  be  quite 
likely  to  travel  through  the  same  road  to  the  same  result. 

"  An  inventor  has  no  right  to  his  invention  at  common 
"  law.  He  has  no  right  of  property  in  it  originally.  The 
"  right  which  he  derives  is  a  creature  of  the  statute  and 
**  of  grant,  and  is  subject  to  certain  conditions  incorporated 
"in  the  statutes  and  in  the  grants.  If  to-day  you  should 
"  invent  an  art,  a  process,  or  a  machine,  you  have  no  right 
"  at  common  law,  nor  any  absolute  natural  right,  to  hold  that 
"  for  seven,  ten,  fourteen,  or  any  given  number  of  years, 
"  against  one  who  should  invent  it  to-morrow,  without  any 
"  knowledge  of  your  invention,  and  thus  cut  me  and  every- 
"  body  else  off  from  the  right  to  do  to-morrow  what  you 
"  have  done  to-day.  There  is  no  absolute  or  natural  right 
"  at  common  law,  that  I,  being  the  original  and  first  inventor 
"  to-day,  have  to  prevent  you  and  everybody  else  from  in- 
"  venting  and  using  to-morrow  or  next  day  the  same  thing. ' ' l 

Another  reason  that  militates  against  the  theory  that  an 
inventor  has  any  natural  exclusive  right  to  his  invention, 
is  that,  in  a  state  of  nature,  he  would  have  no  power  to 
enforce  his  rights.  In  theory,  his  every  neighbor  is  as 
strong  as  he,  and  combined  they  are  much  stronger.  It 
may  be  urged,  that,  as  the  inventor  confers  a  benefit  on  his 
neighbor,  by  giving  him  knowledge  of  the  invention,  the 
neighbor  is  bound,  in  common  justice,  to  make  return 
therefor.  This  principle  is  no  stronger  than  the  one,  that 
the  inventor  is  bound,  in  common  justice  to  his  fellow-men, 
to  permit  them  an  equal  chance  with  himself  to  amass 
wealth,  when  doing  so  entails  no  injury  on  himself. 


1     Am.  It.  df  /..  S.  c'V  D.  Mack.  Co.  VS.  .tin.  ToolQf  Mach.  Co.,  4  Fisher's  Pat.  Cases,  294. 

2 


IO 


Manual  of  Patent  Law. 


If  an  inventor  has  a  natural  exclusive  right  to  his  inven- 
tion for  one  moment,  he  has  it  forever;  and,  if  any  limit 
of  time  can  be  set  to  such  a  right,  only  infinite  wisdom  is 
adequate  to  so  delicate  a  task.  To  state  the  doctrine  of 
natural  right  thus,  is  to  show  that  it  does  not  exist.  The 
law  has  never  recognized  the  doctrine  of  natural  right ;  for 
it  can  not  recognize  what  does  not  exist. 

The  Policy  of  the  Patent  Law  is,  primarily,  a 
selfish  one  on  the  part  of  the  public,  and  only  secondarily 
intended  for  the  benefit  of  inventors,  and  then  as  a  means 
to  an  end  only.  The  Constitution  of  the  United  States 
gives  Congress  the  power  "  to  promote  the  progress  of 
"  science  and  the  useful  arts,  by  securing,  for  limited  times, 
"  to  authors  and  inventors,  the  exclusive  right  to  their 
"respective  writings  and  discoveries;"  thus  showing,  in 
this  fundamental  legislation,  that  the  object  sought  is  a 
benefit  accruing  to  the  public. l 

The  theory  of  the  law  is,  that  the  promotion  of  science 
and  the  useful  arts  is  of  great  benefit  to  society  at  large, 
and  that  such  promotion  can  be  attained  by  securing  to 
inventors  and  authors,  for  limited  times,  the  exclusive  right 
to  their  inventions  and  writings.  That  such  theory  is 
correct,  it  is  needless  to  say.  It  is  almost  self-evident, 
or  at  any  rate  readily  susceptible  of  proof,  that  the  magnifi- 
cent material  prosperity  of  the  United  States  of  America  is 
directly  traceable  to  wise  patent  laws  and  their  kindly  con- 
struction by  the  courts. 

The  patent  laws  promote  the  progress  of  the  useful  arts, 
in  at  least  two  ways:  First,  By  stimulating  inventors  to 
constant  and  persistent  effort,  in  the  hope  of  producing 
some    financially   valuable    invention;    and,    Second,    By 

1    Day  vs.  Union  Rubber  Co.,  J  Match,  joo ;   Kendall  vs.  U'insor,  21  Ho~vard,  J2J. 


Manual  of  Patent   Law.  ii 


protecting  the  investment  of  capital  in  the  working  and 
development  of  a  new  invention  from  interference  and 
competition  till  the  investment  becomes  remunerative. 

A  Patent  is  a  Contract  between  the  inventor  and 
the  Government  representing  the  public  at  large.1  The 
consideration  moving  from  the  inventor  is  the  production 
of  a  new  and  useful  thing,  and  the  giving  to  the  public  of 
a  full  knowledge  thereof  by  means  of  a  proper  application 
for  a  patent,  whereby  the  public  is  enabled  to  practice  the 
invention  when  the  patent  expires.  The  consideration 
moving  from  the  Government  is  the  grant  of  an  exclusive 
right  for  a  limited  time,  and  this  grant  the  Government 
protects  and  enforces  through  its  courts. 

It  is  not  unusual  for  inventors  to  ask,  "  Why,  when  the 
"  Government  has  given  me  an  exclusive  right,  does  it  not 
"protect  me  in  that  right  at  its  own  expense?"  There 
are  numerous  and  all  satisfactory  answers  to  this  question. 
The  Government  does  not  protect  any  right  of  property  in 
a  citizen  at  its  own  expense.  The  law  gives  a  man  a  right 
to  have  debts  due  him  paid ;  but  it  does  not  collect  those 
debts  at  Government  expense.  A  practical  answer  to  the 
question  is,  that,  if  the  Government  were  to  attempt  to  carry 
on,  at  its  own  cost,  all  suits  for  infringement  that  patentees 
should  request,  it  would  require  such  a  number  of  courts 
and  such  a  host  of  lawyers,  that  the  whole  national  revenue 
would  not  suffice  to  pay  them,  and  the  whole  patent  system 
would  break  of  its  own  weight.  Still  another  answer  is, 
that  the  Government  would,  in  a  great  many  such  suits, 
find  that  the  alleged  inventor  had  not  given  the  considera- 
tion demanded  for  his  patent,  in  that  his  invention  was  not 
new;   and  thus  the  public  would  be  unjustly  taxed  to  pay 

1    Ransom  vt.  N.  K,  /  Fisher's  Pat.  Cases,  2J2. 


12  Manual  of  Patent  Law. 

the  costs  of  suits  which  the  patentees  had  no  right  to  have 
brought.  There  are  other  answers  of  equal  force,  but 
these  will  suffice. 

The  Government  provides  the  machinery  of  courts  to 
enforce  the  rights  of  inventors.  This  machinery  can  be 
set  in  motion  by  the  patentee;  and,  by  the  provision  of 
this  machinery,  the  Government  has  done  its  whole  duty  in 
the  premises. 

The  method  followed  by  these  United  States  in  the 
granting  of  patents,  is  probably  the  best  in  the  world,  and 
never  ought  to  be  materially  changed.  But  one  or  two 
other  countries  make  any  examination  at  all  into  the 
novelty  of  an  alleged  invention  presented  as  subject- 
matter  for  a  patent,  and  by  none  of  them  is  that  thorough 
and  systematic  examination  made  that  is  had  here.  The 
small  sum  of  money  paid  by  an  applicant  for  a  patent 
is  not  really  in  the  nature  of  a  fee:  it  is  money  paid  to 
support  trained  experts  kept  to  examine  into  the  novelty 
of  alleged  inventions,  and  to  prevent  inventors  from  going 
away  with  clearly  invalid  patents.  Were  it  not  for  this 
governmental  examination,  no  one  would  buy  a  patent,  or 
risk  any  capital  in  working  under  it,  except  after  a  thor- 
ough and  expensive  search  and  vindication  by  a  private 
professional  expert.  The  Government  really  does  a  great 
amount  of  expert  work  for  a  small  sum  of  money.  That 
the  examination  made  is  not  always  perfect,  is  not  sur- 
prising, when  the  vast  number  of  applications  acted  on  is 
taken  into  account,  —  there  being  about  twenty-one  thou- 
sand applications  per  year.  The  wonder  is,  not  that  so 
many  mistakes  are  made  by  the  examiners  of  the  Patent 
Office,  but  that  they  make  so  few. 


Manual  of  Patent   Law.  13 


CHAPTER    II. 

PATENTABLE  SUBJECT-MATTER. 

THE  statute  provides:  "  That  any  person  who  has  in- 
"  vented  or  discovered  any  new  and  useful  art, 
"  machine,  manufacture,  or  composition  of  matter,  or  any 
"  new  and  useful  improvement  thereof,  not  known  or  used 
"  by  others  in  this  country,  and  not  patented  or  described 
"  in  any  printed  publication  in  this  or  any  foreign  country, 
"  before  his  invention  or  discovery  thereof,  and  not  in 
"  public  use  or  on  sale  for  more  than  two  years  prior  to 
"  his  application,  unless  the  same  is  proved  to  have  been 
"  abandoned,  may,  upon  payment  of  the  duty  required  by 
"  law,  and  other  due  proceedings  had,  obtain  a  patent 
"therefor."1 

The  words  "invented"  and  "discovered"  are,  for  the 
purposes  of  the  patent  law,  practically  synonymous. 2 

It  may  be  observed,  first,  that  an  invention  for  which 
a  patent  is  sought  must  be  original  with  the  applicant. 
Some  countries,  notably  Great  Britain,  allow  the  first  intro- 
ducer of  an  invention  to  take  a  patent  therefor,  holding 
such  an  introducer  to  be  the  first  inventor  within  the  realm. 
Under  the  law  of  the  United  States,  the  applicant  must  be 
really  an  inventor,  —  the  invention  must  be  original  with 
him.  Although  the  statute  specifies  "any  person,"  this  is 
construed  to  permit  joint  inventors,  no  matter  how  many 


1  Section  24,  Act  0/  July  8,  1870. 

2  Morton  vs.  NevhYtrk  Eye  Infirmary,  2  Fishtr't  Pat.  Cases,  32 r. 


i4  Manual  of  Patent  Law 


in  number,  to  apply  for  and  take  a  patent.  Minors  can 
apply  as  well  as  adults. 

The  patent  law  does  not  protect  every  new  and  useful 
invention  or  discovery:  a  discovery  in  mathematics,  such 
as  a  new  method  of  squaring  a  circle,  or  of  getting  the  area 
of  an  irregular  figure,  is  not  a  patentable  invention ;  neither 
is  an  invention  in  finance,  such  as  a  new  method  of  bank- 
ing, nor  an  invention  in  the  science  of  government,  such 
as  a  new  method  or  principle  of  laying  taxes ;  and  it  was 
held  by  one  really  learned  judge,  that  the  art  of  producing 
insensibility  in  the  human  frame  by  means  of  the  inhalation 
of  etheric  vapors,  although  the  discovery  of  the  anaesthetic 
powers  of  ether  was  original  with  the  patentees,  is  not  a 
patentable  invention.1  It  is  to  be  regretted,  however,  that 
the  case  referred  to  was  not  carried  to  the  Supreme  Court, 
that  the  principle  therein  laid  down  might  have  been  for- 
ever confirmed  or  reversed. 

"  A  discovery  of  a  new  principle,  force,  or  law,  operating, 
"  or  which  can  be  made  to  operate,  on  matter,  will  not 
"  entitle  the  discoverer  to  a  patent.  It  is  only  when  the 
"  explorer  has  gone  beyond  the  mere  domain  of  discovery, 
"  and  has  laid  hold  of  the  new  principle,  force,  or  law, 
"  and  connected  it  with  some  particular  medium  or  me- 
"  chanical  contrivance,  by  which,  or  through  which,  it  acts 
"  on  the  material  world,  that  he  can  secure  the  exclusive 
"  control  of  it  under  the  patent  laws.  He  then  controls 
"  his  discovery  through  the  means  by  which  he  has  brought 
"  it  into  practical  action  or  their  equivalent,  and  only 
"  through  them.  It  is  then  an  invention,  although  it  em- 
"  braces  a  discovery."2 


1  Morton  vs.  New-  York  Eye  Infirtnaiy,  2  Fisher's  Pat.  Cases,  321. 

2  Morton  vs.  AVw-  York  Eye  Infirmary,  2  Fisher's  Pat.  Cases,  323. 


Manual  of   Patent   Law.  15 


The  inventions  specified  as  patentable  are, — 

1.  An  art  or  an  improvement  of  an  art; 

2.  A  machine  or  an  improvement  of  a  machine; 

3.  A  manufacture  or  an  improvement  of  a  manufacture; 

4.  A  composition  of  matter  or  an  improvement  thereof. 

An  Art,  in  the  sense  of  the  patent  law,  is  nearly  or 
cjuite  the  same  thing  as  a  process;  a  patent  for  an  art  is  for 
a  way  or  manner  of  doing  something  in  distinction  from 
tangible  means  made  use  of  in  the  process.  That  which  is 
substantially  a  single  invention  often  presents  subject-matter 
for  patentability  as  an  art,  a  machine,  and  a  manufacture. 
For  instance,  there  is,  at  this  writing,  a  patent  in  existence, 
for  an  improvement  pertaining  to  the  manufacture  of  car- 
wheels  ;  the  body  of  the  wheel  is  cast  of  iron,  and  the  tire 
of  steel,  both  poured  while  molten  into  the  same  mold  at  the 
same  time,  being  kept  separate  by  an  annular  band  of  iron 
put  into  the  matrix  of  the  mold.  In  this  case,  the  inventor 
had  his  choice  to  patent  the  process,  the  mold,  or  the  wheel, 
all  being  new,  or  he  might  patent  all  three,  thus  covering 
an  art,  a  machine,  and  a  manufacture  in  what  is  really 
a  single  invention.  He  chose  to  patent  the  art,  claiming 
the  process  of  casting  a  wheel  having  a  body  of  one  kind 
or  quality  of  metal  and  a  tire  of  another  kind  or  quality  of 
metal,  by  pouring  both  metals  into  the  same  mold,  at  or 
about  the  same  time,  the  two  metals  being  kept  apart  while 
molten  by  a  circumferential  band  placed  in  the  mold. 

It  may  be  remarked  here,  that,  when  a  new  principle 
in  nature  has  been  discovered,  and  a  way  devised  of  prac- 
tically applying  the  principle,  it  is  advisable,  in  a  majority 
if  not  all  cases,  to  claim  the  invention  as  a  process  or  art, 
if  it  is  susceptible  of  being  so  claimed;  for  then  the  use  of 
any  agencies  involving  the  application  of  the  principle  will 


16  Manual   of   Patent   Law. 

be  an  infringement  of  the  patent;  while,  if  only  the  partic- 
ular means — as  the  machine  made  use  of — are  patented, 
another  person  may  devise  some  other  means  to  accomplish 
the  same  result,  which  are  not  legal  equivalents,  and  thus 
avoid  infringement,  while  really  making  use  of  the  prin- 
ciple. A  process  may  be  put  in  practice  by  means  of  me- 
chanical or  chemical  agencies,  according  to  its  nature; 
in  either  case,  new  agents  may  be  employed  to  pro- 
duce a  new  result,  new  agents  may  be  employed  to  produce 
an  old  result,  or  old  agents  may  be  used  in  new  relations  to 
reach  an  old  or  a  new  result,  and  in  either  case  the  process 
will  be  patentable. 

It  is  of  little  or  no  importance  to  specify  an  invention  as 
an  art,  machine,  manufacture,  or  composition  of  matter,  so 
far  as  any  requirement  of  the  statute  is  concerned,  provided 
the  description  is  full  and  clear  and  the  claim  unambiguous ; 
for  courts  take  notice  voluntarily  whether  the  invention  be 
one  or  the  other.  It  is,  however,  important  not  to  plainly 
claim  an  invention  as  one  of  these,  when  it  is  clearly  an- 
other. For  instance :  a  man  invented  a  process  for  spinning 
flax,  the  essential  feature  of  which  was  the  maceration  of 
the  flax,  whereby  it  could  be  spun  at  a  shorter  "  reach;  M 
he  claimed  his  invention  as  "  new  and  improved  machinery 
"  for  macerating  flax,  etc.,"  when,  in  fact,  his  invention 
was  not  a  machine,  but  a  process.  His  patent  was  held  in- 
valid for  this  defect. l 

A  Machine  is  defined  by  Webster  to  be  "  any  body  or 
"  assemblage  of  bodies  used  to  transmit  and  modify  force 
"  and  motion."  This  definition  clearly  gives  the  popular 
idea  of  what  constitutes  a  machine;  but,  for  the  purposes 

1     A"rt>'  vs.  Marsha//,  2  Urebster' s  Pat.  Cases,  34. 


Manual  of  Patent  Law.  17 


of  the  patent  law,  it  may,  perhaps,  be  more  exactly  defined 
as  one  of  the  simple  mechanical  powers  or  a  combination  of 
two  or  more  of  them.  These  simple  mechanical  powers  are 
commonly  spoken  of  as  six  in  number, — the  lever,  the  in- 
clined plane,  the  pulley,  the  wedge,  the  screw,  and  the 
wheel  and  axle.  They  are  really  but  two  in  number,  —  the 
lever  and  inclined  plane;  for  the  pulley  is  but  a  combi- 
nation of  levers  of  the  same  length  having  a  common 
fulcrum,  and  the  wheel  and  axle  simply  a  combination  of 
two  sets  of  levers  having  a  common  fulcrum,  while  the 
wedge  is  but  a  double  inclined  plane  and  the  screw  a  spiral 
inclined  plane. 

The  popular  and  common  idea  of  a  machine,  as  defined 
by  Webster,  is  probably  the  one  moving  in  the  mind  of  the 
legislator  who  drafted  the  patent  law ;  that  is,  a  mechanical 
apparatus  for  producing  or  working  on  some  tangible  pro- 
duct, and  this  in  distinction  from  a  hand-tool  of  fixed  and 
immovable  parts,  as  a  hammer  or  a  gimlet,  which,  though 
strictly  speaking  machines,  are  comprehended  by  the 
patent  law  under  the  term   "manufacture." 

A  Manufacture,  in  the  sense  of  the  patent  law,  is  a 
finished  product,  in  distinction  from  a  process  or  a  ma- 
chine, which  are  agencies  for  the  creation  of  products,  and 
in  distinction,  also,  from  products  of  a  chemical  nature, 
which  are  comprehended  under  the  specification  of  "  com- 
position of  matter." 

The  term  "manufacture"  includes  most  of  the  ordi- 
nary and  vendible  articles  of  trade, — such  as  textile  fa- 
brics, articles  of  personal  attire  (as  hats,  caps,  and  shoes), 
general  hardware,  house-furnishing  goods,  and  the  like, — 
and,  perhaps,  some  tools  which  have  moving  parts,  and 
which  are  really  machines. 
3 


i8 


Manual  of   Patent  Law. 


Composition  of  Matter  comprises  medicinal  and 
chemical  preparations,  and  new  compounds  intended  as 
articles  of  food,  though,  in  some  cases,  a  new  article  of 
food,  as  a  new  and  agreeable  cracker  or  biscuit,  is  as  well 
comprehended  under  the  term  "  manufacture." 

It  has  only  been  intended,  in  this  chapter,  to  point  out 
what  different  kinds  of  new  and  useful  things  are  patentable, 
and  not  to  define  in  what  patentable  novelty  and  utility 
consist.  Those  questions  will  be  discussed  in  subsequent 
chapters. 


Manual  of  Patent  Law.  19 


CHAPTER    III. 

NOVELTY. 

THE  law  requires,  that  an  invention,  to  be  patent- 
able, must  be  "  new  and  useful."1  This  chapter  is 
devoted  to  the  discussion  of  what  constitutes  patentable 
novelty,  and  a  most  difficult  question  it  is.  The  statute 
says  that  the  invention  must  be  "  not  known  or  used  by 
"  others  in  this  country,  and  not  patented  or  described  in 
"  any  printed  publication  in  this  or  any  foreign  country 
"  before  his  (the  inventor's)  invention  or  discovery  there- 
"  of;  "2  so  that,  though  an  invention  may  be  original  with 
an  inventor,  and  new  to  him,  yet,  if  it  had  been  known  or 
used  by  others  in  this  country,  or  patented  or  described  in 
any  printed  publication  in  this  or  any  foreign  country, 
before  his  invention,  it  is  not  new  in  the  meaning  of  the 
patent  law,  and  therefore  not  patentable. 

The  reason  of  this  is,  that,  in  case  the  invention  was 
previously  known  here,  or  patented  or  described  in  a 
printed  publication  anywhere,  then  the  public  was  pre- 
viously in  possession  of  knowledge  of  the  invention,  or 
at  least  might  have  been,  —  the  law  counting  the  accessi- 
bility of  the  information  as  its  possession;  so  that  the 
inventor  does  not  put  the  public  in  possession  of  any  thing 
it  did  not  possess  before,  and  hence  is  not  entitled  to  any 
reward. 


1  Section  24,  Act  0/  July  8, 1870. 

2  Ibid. 


2o  Manual  of  Patent  Law. 


On  the  other  hand,  although  an  invention  may  have  been 
in  public  use  for  a  long  time  in  foreign  countries  previous 
to  his  invention,  yet,  if  it  had  not  been  patented  or  de- 
scribed in  a  printed  publication  anywhere,  an  original 
inventor  of  the  same  thing  is  entitled  to  a  patent  here, 
provided  that,  at  the  time  he  makes  application,  he  does 
not  know  of  such  previous  foreign  use,  so  that  he  may  take 
the  oath  prescribed,  in  good  faith.  Should  an  inventor, 
after  taking  the  oath,  discover  the  fact  of  such  previous 
foreign  use,  that  would  not  affect  the  validity  of  his  patent, 
though  a  knowledge  of  such  use  previous  to  taking  oath 
would  render  him  unable  to  take  the  oath  in  good  faith. 

The  use  in  this  country,  or  patent  or  printed  publication 
anywhere,  which  will  destroy  a  real  inventor's  right  to  a 
patent  must  have  been  previous  to  his  invention.  Such  use, 
patent,  or  publication  will  not  affect  the  inventor's  right  to 
a  patent,  if  such  use,  patent,  or  publication  was  merely 
prior  to  his  application  and  not  prior  to  his  invention, 
unless  the  use  here  was  a  public  use,  with  the  inventor's 
consent,  and  more  than  two  years  prior  to  his  application. 
What  constitutes  a  public  use  here,'  will  be  discussed  herein- 
after. 

The  amount  of  labor  or  thought  expended  upon  an  inven- 
vention  is,  for  the  purposes  of  this  discussion,  immaterial. 
It  may  be  "  a  simple  but  happy  conception,  which,  when 
"  reduced  to  practice,  produced  surprising  results,  both  in 
"  the  quality  of  the  article  manufactured  and  the  rapidity 
"  with  which  it  was  turned  out.  A  subject-matter  to  be 
"  patentable  must  require  invention,  but  it  is  not  necessa- 
"  rily  the  result  of  long  and  painful  study,  or  embodied 
"  alone  in  complex  mechanism.  A  single  flash  of  thought 
"  may  reveal  to  the  mind  of  the  inventor  the  new  idea,  and 
"  a  frail  and  simple  contrivance  may  embody  it.     Some 


Manual  of  Patent  Law.  21 


"  inventions  are  the  result  of  long  and  weary  years  of  study 
"and  labor,  pursued  in  the  face  of  abortive  experiments 
"  and  baffled  attempts,  and  finally  reached  after  the  severest 
"  struggles,  while  others  are  the  fruit  of  a  single  happy 
"thought."1 

It  may  sometimes  become  pertinent  to  inquire  whether  a 
device  under  consideration  is  not  so  frivolous  as  to  exclude 
the  possibility  of  any  thought  having  been  exercised  upon 
it,  but  in  all  other  cases  the  amount  of  thought  or  labor 
exercised  is  unimportant.  Iron  was  formerly  made  by  the 
use  of.  charcoal  and  a  cold  blast;  a  man  discovered  an 
advantage  in  the  use  of  bituminous  coal  and  a  cold  blast, 
another  man  discovered  a  further  advantage  in  the  use 
of  bituminous  coal  and  a  hot  blast,  a  third  person  discov- 
ered an  advantage  in  the  use  of  anthracite  coal  and  a  hot 
blast;  each  of  the  three  persons  took  a  patent  for  his 
invention,  and  the  patents  were  all  held  valid.  In  the 
decision  last  quoted  from,  the  invention  patented  was  only 
a  ruffle  for  ladies'  wear,  and  the  patent  was  sustained. 

Identity.  The  question  of  novelty  comes  up  oftenest 
in  its  most  difficult  aspect,  in  determining  whether  an 
alleged  invention  is  or  not  substantially  identical  with  some 
prior  existing  thing,  which  was  in  common  use  here,  or 
shown  in  some  patent  or  printed  publication.  An  inven- 
tion, in  such  case,  in  order  to  be  patentable,  must  be 
substantially  unlike  the  prior  thing. 

Every  change  is  not  invention;  indeed,  a  device  may 
embody  a  very  high  degree  of  ingenuity,  and  yet  not  be 
patentable,  because  not  substantially  unlike  some  prior 
thing.     Suppose  a  person  to  have  invented  and  patented 

1    Magic  Ruffle  Co.  vs.  Douglas,  2  Fisher's  Pat.  Cases,  330. 


22  Manual  of   Patent  Law. 


a  machine  having  four  distinct  parts  or  elements ;  another 
person,  desiring  to  effect  the  same  result,  might  make 
another  machine  having  none  of  the  exact  parts  of  the 
first,  but  having  four  other  parts  which  are  mechanical 
equivalents  for  the  four  parts  used  by  the  patentee.  In  the 
selection  and  arrangement  of  his  parts,  the  latter  person 
may  have  shown  great  ingenuity,  especially  if  he  has,  as  is 
often  the  case,  been  all  the  while  aiming  to  avoid  the 
appearance  of  the  prior  machine;  yet,  if  the  parts  of  the 
later  machine  operate  upon  the  same  .principle  as  the  parts 
of  the  prior  machine, — are  equivalents  for  them,  —  then, 
no  matter  how  unlike  the  two  machines  may  be  in  appear- 
ance, the  latter  is  substantially  identical  with  the  former, 
and  is  not  patentable,  unless  it  should  happen  to  produce  a 
better  or  cheaper  product  than  the  prior  machine,  and  then 
only  as  an  improvement  on  the  former;  and,  in  such  case, 
the  later  patent  would  be  tributary  to  the  earlier,  and  could 
not  be  put  in  practice  without  the  permission  of  the  owner 
of  the  former  patent. 

The  question  of  substantial  identity  often  comes  up  in  a 
different  aspect  when  an  invention  is  presented  at  the 
Patent  Office  to  be  patented,  than  when,  in  a  suit  in  the 
courts,  a  patentee  is  striving  to  show  that  a  certain  thing  is 
an  infringement  of  his  patent.  A  device  may  be  patent- 
able, and  yet  be  an  infringement  of  another  prior  patent. 
Perhaps  this  fact  is  not  generally  understood. 

When  a  man  makes  a  new  and  useful  invention,  he  is  en- 
titled to  a  patent  for  it.  Another  man  may  improve  upon 
the  same  invention  so  as  to  produce  a  better  result  of  the 
same  kind  or  a  cheaper  result,  or  he  may  simplify  the  inven- 
tion, so  that  he  will  be  entitled  to  a  patent  for  the  improve- 
ment. In  such  case  the  later  patent  is  subordinate  and 
tributary  to  the  earlier,  and  can  not  be  worked  except  by 


Manual  of   Patent  Law 


23 


license  from  the  earlier  patentee.  Whether  a  man.  has 
made  a  patentable  improvement  on  a  former  patent,  is 
often  a  question  at  the  Patent  Office;  but  the  question 
does  not  come  up  in  this  shape  in  infringement  suits  in 
the  courts,  —  there  the  question  is,  whether  two  things  are 
substantially  identical,  without  reference  to  whether  one 
works  better  or  worse  than  the  other. 

Mere  change  of  form  in  a  machine  or  its  parts  does  not 
destroy  the  substantial  identity  of  the  parts  changed,  if 
such  part  still  performs  the  same  duty  or  function  as  before ; 
and  it  must  not  be  supposed  that,  because  one  machine 
looks  entirely  unlike  another,  that  therefore  they  are  sub- 
stantially different.  After  one  man  had  invented  a  steam- 
engine  and  patented  it,  another  man  undertook  to  evade 
the  patent;  he  produced  an  engine  which  looked  entirely 
unlike  the  first,  —  yet,  when  some  one  thought  to  turn  the 
later  machine  "  upside  down,"  the  resemblance  came  out 
at  once.  When  one  recalls  the  scores,  if  not  hundreds,  of 
different  styles  of  steam-engines,  all  operating  on  the  same 
general  principle,  —  that  is,  by  the  expansive  force  of  steam, 
— he  can  readily  comprehend,  that  though  things  may  be 
very  unlike  in  appearance,  yet  they  may  be  the  same  in 
operating  principle. 

Equivalents.  There  are  certain  things  in  mechanics 
and  in  chemistry,  known  to  the  patent  law  as  equivalents, 
—  that  is,  different  combinations  of  mechanical  or  chemical 
elements  which  will  accomplish  the  same  results.  On  look- 
ing into  a  book  containing  a  compilation  of  mechanical 
movements, — and  there  are  such  books,  —  one  part  will  be 
found  devoted  to  a  class  of  devices  for  converting  rotary 
into  regular  rectilinear  reciprocating  motion ;  another  part 
will  be  devoted  to  devices  for  converting  regular  recipro- 


24  Manual  of  Patent  Law. 


eating  motion  into  intermittent  reciprocating  motion, — 
and  so  on;  each  of  these  parts  or  chapters  contains  a 
number  of  different  devices  for  effecting  the  same  purpose. 
All  the  devices  in  the  same  part  or  chapter  are  equivalents 
for  each  other,  known  and  recognized  as  such.  Now  if,  in 
a  patented  machine,  one  of  these  devices  is  made  use  of  to 
accomplish  a  certain  movement  or  purpose,  it  is  not  a  sub- 
stantially, different  thing  to  use  another  of  the  devices 
which  is  a  known  and  recognized  substitute  for  the  device 
shown  in  the  patent. 

A  learned  judge  says  that  "  By  equivalents  in  machinery 
"  is  usually  meant  the  substitution  of  merely  one  mechanical 
"  power  for  another,  or  one  obvious  and  customary  mode 
"  for  another,  of  effecting  a  like  result."1 

Another  judge  says:  "A  mechanical  equivalent,  I  sup- 
"  pose,  as  generally  understood,  is  where  one  may  be 
"  adopted  instead  of  the  other,  by  a  person  skilled  in  the 
"  art,  from  his  knowledge  of  the  art."2 

Another  judge  says:  "  When,  in  mechanics,  one  device 
11  does  a  particular  thing,  or  accomplishes  a  particular 
"  result,  every  other  device  known  and  used  in  mechanics, 
"  which  skillful  and  experienced  workmen  know  will  pro- 
"  duce  the  same  result  or  do  the  same  particular  thing,  is  a 
"  known  mechanical  substitute  for  the  first  device  men- 
"  tioned  for  doing  the  same  thing  or  accomplishing  the 
"  same  result.  It  is  sufficient  to  constitute  a  known  rae- 
"  chanical  substitute,  that  when  a  skillful  mechanic  sees 
"  one  device  doing  a  particular  thing,  that  he  knows  the 
"  other  device,  whose  uses  he  is  acquainted  with,  will  do 
"  the  same  thing."3 

1  Smith  vs.  Doiuning,  I  Fisher's  Pat.  Cases,  87. 

2  Johnson  vs.  Root,  1  Fisher's  Pat.  Cases,  363. 

3  Carter  vs.  Baker,  4  Fisher's  Pat.  Cases,  fog. 


Manual  of  Patent  Law.  25 


The  same  rules  by  which  may  be  determined  what  con- 
stitutes an  equivalent  in  machinery,  are  applicable  in  deter- 
mining what  constitutes  an  equivalent  in  an  "  art,"  or,  in 
other  words,  in  a  process,  in  a  "manufacture,"  or  a 
"  composition  of  matter."  Where  a  process  consists  of  a 
single  step  or  a  succession  of  steps,  it  is  an  equivalent  for 
one  of  these  steps  to  substitute  another  step,  or  way,  or 
manner  of  action,  that  a  person,  skilled  in  the  branch  of 
business  to  which  the  process  appertains,  knows,  simply 
from  past  experience  or  accumulated  knowledge,  will  effect 
the  same  result. 

And  in  "  compositions  of  matter  "  — or,  generally  speak- 
ing, in  medicinal,  chemical,  and  food  compounds — it  is 
an  equivalent  to  use,  in  the  place  of  one  of  the  substances 
of  which  the  preparation  is  composed,  another  substance 
which  a  person  of  competent  knowledge  (in  this  case  gen- 
erally a  chemist)  knows,  from  his  knowledge  of  ingredients, 
will  serve  the  same  purpose.  Upon  this  subject  a  learned 
judge  says:  "  Where  a  patent  is  granted  for  a  composition 
"  made  of  several  ingredients,  it  covers  and  embraces 
"  known  equivalents  of  each  of  the  ingredients.  An 
"  equivalent  of  any  substance  is  another  substance  having 
"  similar  properties  and  producing  substantially  the  same 
"effect."1 

In  comparing  two  "manufactures," — that  is,  generally 
speaking,  two  finished  products,  —  it  is  to  be  determined 
whether  or  not  they  are  identical,  by  ascertaining  if  they 
have  similar  parts  or  properties,  if  they  will  answer  the 
same  end,  and  if  they  answer  the  same  end  by  means 
of  similar  properties.  If  they  do,  then  they  are  substan- 
tially identical ;  otherwise  not. 

1    Matthews  vs.  Spates,  i  Fisher's  Pat.  Cases,  bog. 


26  Manual   of   Patent   Law. 


Double  Use.  The  mere  application  of  an  existing 
process,  machine,  manufacture,  or  compound  to  a  purpose 
to  which  it  had  never  before  been  applied,  is  not  patent- 
able. If  the  prior  device  is  a  patented  one,  the  patentee 
has  the  exclusive  right  to  it  for  all  the  uses  to  which  it  is 
applicable,  no  matter  whether  he  knew  of  all  those  uses  or 
not,  and  no  matter  what  the  use  for  which  he  deemed 
it  specially  applicable.  All  new  uses  that  are  afterward 
found  or  discovered  for  the  device  are  his  property.  * 

Upon  this  topic  a  learned  judge  says:  "It  requires  no 
"  commentary  to  establish  that  the  application  of  an  old 
"  thing  to  a  new  use,  without  any  other  invention,  is  not 
"  a  patentable  contrivance.  A  man,  who  should  use  a 
"  common  coffee-mill  for  the  first  time  to  grind  peas, 
"  could  hardly  maintain  a  patent  for  it.  A  man,  who 
"  should,  for  the  first  time,  card  wool  on  a  common 
"  cotton-carding  machine,  would  find  it  difficult  to  estab- 
"  lish  an  exclusive  right  to  the  use  of  it  for  such  a  pur- 
"pose."2  In  a  subsequent  case  before  the  same  judge, 
Elias  Howe  brought  suit  for  an  infringement  of  a  patent 
owned  by  him  for  a  process  of  preparing  palm-leaf  or 
brub-grass  for  stuffing  for  beds.  It  appeared,  at  the  trial, 
that  the  same  process  had  been  previously  applied  to  the 
preparation  of  hair  for  the  same  purpose.  The  judge  said 
of  the  patented  process:  "  It  is  therefore  the  mere  applica- 
"  tion  of  an  old  process  or  old  machinery  to  a  new  use.  It 
"  is  precisely  the  same,  as  if  a  coffee-mill  were  now  for  the 
"  first  time  used  to  grind  corn.  The  application  of  an  old 
"  process  to  manufacture  an  article  to  which  it  had  never 
"  before  been  applied,  is  not  a  patentable  invention.     There 


1     Woodman  vs.  Stinipson,  3  Fisher's  Pat.  Cases.  104.    McCo»ib  ts.  Brodie,  2  Patent 

Office  Gazette,  iiq. 

2    Antes  vs.  Howard,  1  Robb's  Pat.  Cases,  6Q4. 


Manual  of  Patent  Law.  27 


"  must  be  some  new  process  or  some  new  machinery  used 
"  to  produce  the  result.  If  the  old  spinning-machine  to 
"  spin  flax  were  now  first  applied  to  spin  cotton,  no  man 
"  could  have  a  new  patent  to  spin  cotton  in  that  mode, 
"  much  less  the  right  to  spin  cotton  in  all  modes,  although 
"he  had  invented  none.  He  who  produces  an  old  result 
"  by  a  new  mode  or  process,  is  entitled  to  a  patent  for  that 
"mode  or  process;  but  he  can  not  have  a  patent  for  a 
"  result  merely,  without  using  some  new  mode  or  process 
"  to  produce  it."1  The  patent  was  held  invalid.  It  may 
be  remarked,  apropos  of  this  case,  that  the  claim  was  not 
rightfully  drawn;  if  claim  had  been  made  to  the  prepared 
brub-grass  as  a  new  article  of  "manufacture,"  it  might 
have  been  possible  to  show  that  the  manufacture  had  such 
different  properties,  in  kind,  from  the  former  manufacture, 
and  so  much  advantage  in  cheapness,  as  to  support  a 
patent. 

In  a  still  later  case,  before  the  Supreme  Court,  the  im- 
provement claimed  in  the  patent  was  the  making  of  door 
and  other  knobs  of  clay  or  porcelain  fitted  upon  a  shank  in 
a  common  manner.  It  was  shown  that  knobs  of  clay  or 
porcelain  were  old,  and  that  the  mode  of  fastening  the 
shank  into  the  cavity  of  the  knob  was  old.  The  only  new 
thing  was  the  substitution  of  a  clay  or  porcelain  knob  in  the 
place  of  a  metallic  one.  The  court  said:  "  The  difference 
"  is  formal,  and  destitute  of  ingenuity  or  invention.  It  may 
"  afford  evidence  of  judgment  and  skill  in  the  selection  and 
"  adaptation  of  the  materials  in  the  manufacture  of  the 
"  instrument  for  the  purposes  intended,  but  nothing  more;  " 
and  the  patent  was  declared  void.2 


1  Howe  vs.  Abbott,  2  Robb\<t  Pat.  Cases,  103. 

2  Hotchkiss  vs.  Greenwood,  11  Howard,  2/8. 


28  Manual  of  Patent  Law. 


Combinations.  An  invention  is,  generally  speaking, 
always  a  specific  thing  or  a  combination  of  specific  things; 
and  this  is  true,  whether  the  invention  be  an  art,  machine, 
manufacture,  or  composition,  —  for  a  process  must  consist 
of  a  single  step  or  a  succession  of  steps,  a  machine  must  be 
a  single  elementary  power  or  a  combination  of  elementary 
powers,  a  manufacture  (when  strictly  distinguished  from 
other  patentable  subjects)  is  a  specific  thing,  and  a  compo- 
sition of  matter  must  always  be  a  combination  of  different 
ingredients. 

A  combination  may  be  a  valid  and  proper  one,  though 
all  the  parts  which  compose  it  are  old  when  considered 
separately.1  All  the  7iew  elements  of  a  combination  can 
be,  generally,  claimed  specifically,  as  well  as  in  the  combi- 
nation. When  the  invention  under  consideration  is  a 
combination,  its  novelty  is  not  impugned  by  showing  that 
any  one  or  more  of  its  elements  less  than  the  whole  had 
been  used  together  before.  The  novelty  of  a  combination 
can  only  be  destroyed  by  showing  that  all  the  elements 
thereof  had  been  used  together  before,  and  in  the  same 
relation  to  each  other  as  in  the  combination  under  consid- 
eration. 

"  Equivalents  "  in  Combinations.  There  seems 
to  be  some  uncertainty,  in  some  cases  decided  by  the  courts, 
as  to  how  broadly  the  doctrine  of  equivalents  applies  to 
mechanical  combinations.  Take  the  case  of  Crompton  vs. 
Belknap  Mills  (vol.  iii.  Fisher's  Patent  Cases,  page  536). 
The  judge,  in  the  course  of  his  decision,  quotes  as  fol- 
lows :  — 

"  '  Any  machine  combining  substantially  in  the  same 
"  manner,  substantially  the  same  elements,  or  well-known 

1    Evans  vs.  Eaton,  Peters' s  Circuit  Court  ReJ>.  343.    Barrett  vs.  Hull,  1  Mas.  474. 


Manual  of   Patent  Law.  29 


"  substitutes  for  the  same,  must  be  regarded  as  an  infringe- 
"  ment.'      Gorham  vs.  Mixter,  1  Am.  Law  Jour.  549. 

"  '  But  it  would  not  be  infringed  by  a  combination  which 
"  dispensed  with  one  of  the  elements  and  substituted  there- 
"  for  another  element,  substantially  different  in  construction 
"and  operation,  but  serving  the  same  purpose.'  Eames 
"  vs.  Godfrey,  1  Wallace,  79. 

"  '  Nor  by  any  and  every  combination  of  the  same  ele- 
"  ments,  which  may  produce  the  same  result,  but  only  by 
"  the  peculiar  combination  of  the  elements  described  or 
"  one  substantially  the  same.'  Case  vs.  Brown,  2  Wal- 
"  lace,  320. 

"  '  The  elements  here  combined  are  old,  the  patent  is  for 
"  the  peculiar  combination,  and  the  doctrine  of  mechanical 
"  equivalents  does  not  apply.'  MeCormick  vs.  Talcott,  20 
"Howard,  405." 

Now  the  first  two  of  these  quoted  decisions  would  be 
generally  recognized  as  applications  of  the  doctrine  of  me- 
chanical equivalents,  if  their  language  had  been  used  with 
reference  to  a  claim  for  a  specific  thing.  The  language  of 
the  third  case  seems  to  be  extreme  in  the  opposite  direction. 
The  decision  last  quoted,  which  will  be  given  more  at 
length  soon,  enunciates  as  a  rule  for  construction  of  claims, 
that  the  "  state  of  the  art  "  shall  be  taken  into  considera- 
tion; and  this  rule  is  as  well  applicable  to  a  claim  for 
a  specific  thing  as  to  a  claim  for  a  combination. 

In  the  case  of  Crompton  vs.  Belknap  Mills,  the  judges, 
while  seeming  to  enunciate  broadly  the  rule  that  the  doc- 
trine of  mechanical  equivalents  does  not  apply  to  elements 
of  combinations  which  are  old  when  separately  considered, 
really  decided  that  there  was  no  infringement  of  the  plain- 
tiff's combination  claim,  because  there  was  a  "  marked  and 
substantial  difference  "  between  one  element  of  the  plain- 


30  Manual  of  Patent  Law. 


tiff's  combination  and  an  element  in  the  defendant's  com- 
bination for  performing  a  similar  office,  which  can  hardly 
be  held  to  be  a  practical  decision  upon  the  point  in 
question. 

There  can  be  no  question  made,  that  when  an  element 
of  a  combination  is  new,  separately  considered,  the  doc- 
trine of  mechanical  equivalents  applies  with  full  force. x 

The  decision  of  the  Supreme  Court,  in  the  case  of 
McCormick  vs.  Talcott  (20  Howard,  402),  was  as  follows: 
The  claim  was,  —  "  4th.  I  claim  the  combination  of  the 
"  bar  L  and  the  dividing-iron  M,  for  separating  the  wheat 
"in  the  manner  described."  Upon  this  the  court  said 
(page  404):  "In  order  to  ascertain  whether  the  divider 
"  used  by  defendants  infringes  that  of  the  complainant,  we 
"must  first  inquire  whether  McCormick  was  the  first  to 
"  invent  the  machine  called  a  divider,  or  has  merely  im- 
"  proved  a  known  machine  by  some  peculiar  combination 
"  of  mechanical  devices  which  perform  the  same  functions 
"in  a  better  manner.  If  he  be  the  original  inventor  of 
"  the  device  or  machine  called  the  divider,  he  will  have 
"  the  right  to  treat  as  infringers  all  who  make  dividers 
"  operating  on  the  same  principle,  and  performing  the 
"  same  functions  by  analogous  means  or  equivalent  com- 
"  binations,  even  though  the  infringing  machine  may  be 
"  an  improvement  of  the  original,  and  patentable  as  such. 
"  But,  if  the  invention  claimed  be  itself  but  an  improve- 
"  ment  on  a  known  machine,  by  a  mere  change  of  form  or 
"  combination  of  parts,  the  patentee  can  not  treat  another 
"as  an  infringer  who  has  improved  the  original  machine 
"  by  use  of  a  different  form  or  combination,  performing 
"  the  same  functions.     The  inventor  of  the  first  improve- 

1     Ccthoon  vs.  Ring,  I  Fisher's  Put.  Cases,  597. 


Man u at,  of  Patent  Law.  31 


"  ment  can  not  invoke  the  doctrine  of  equivalents,  to  sup- 
"  press  all  other  improvements  which  are  not  mere  colorable 
"  evasions  of  the  first." 

The  authority  of  this  case  can  not  be  disputed.  The 
justice  of  the  principle  enunciated  is  perfectly  evident; 
but  that  principle  has  as  strong  an  application  to  a  claim 
for  a  specific  thing  as  to  a  claim  for  a  combination.  The 
distinction  between  an  "equivalent"  and  a  u  mere  color- 
able evasion  "  has  never  been  clearly  drawn,  and  perhaps 
can  not  be.  "  Equivalents  "  seems  to  be  a  broad  term, 
including  "  colorable  evasions  "  which  are  plain,  palpable, 
and  obvious  substitutes,  about  which  no  doubt  can  be 
raised  as  to  their  being  substantially  the  same  as  the  things 
for  which  they  are  substituted. 

The  rule,  then,  as  to  elements  of  combinations  which 
are  old,  separately  considered,  is  this :  the  doctrine  of  me- 
chanical equivalents  does  not  apply  to  them  in  its  full 
force;  but  a  mere  colorable  evasion  — a  palpable,  plain, 
obvious  substitute — will  be  held  the  same  thing  as  the 
element  for  which  it  is  substituted.  This  rule  ought  to 
be  given  its  full  force;  for  "  the  most  valuable  inventions 
"  consist  in  the  combination  of  known  mechanical  powers. 
"  Every  part  of  such  inventions  may  be  found  in  some 
"  form  among  the  various  devices  of  human  ingenuity,  and 
"  the  man  who  unites  these  powers,  and  produces  a  new 
"  and  important  result  to  society,  is  well  denominated  a 
"  public  benefactor."1 

The  doctrine  of  equivalents  applies  to  processes,  whether 
composed  of  a  single  step  or  a  combination  or  succession 
of  steps,  and  also  to  combinations  of  substances  forming 
compositions  of  matter.     Where  a  process  consists  of  a 


1    Pi/ts  -vs.  Edmond,  2  Fisher's  Pat.  Casts,  55. 


32  Manual  of  Patent  Law. 


series  of  different  steps,  it  is  really  a  combination  of  such 
steps;  and  if,  in  the  place  of  one  of  them,  another  step  is 
made  use  of,  which  a  person  skilled  in  the  art  to  which  the 
process  appertains,  knows,  from  past  experience  or  accumu- 
lated knowledge,  will  answer  the  same  purpose,  the  substi- 
tution of  such  other  step  is  a  mere  equivalent.  So  in 
combinations  of  substances  to  form  compositions  of  matter, 
if  one  ingredient  is  left  out,  and  another  substituted,  having 
the  same  or  similar  properties,  and  capable  of  serving  the 
same  or  a  similar  purpose,  then  the  use  of  such  substitute  is 
a  mere  equivalent,  and  does  not  render  the  two  compo- 
sitions of  matter  substantially  unlike.  "  Where  a  patent  is 
"  granted  for  a  composition  of  matter  made  of  several 
"ingredients,  it  covers  and  embraces  known  equivalents 
"  of  each  of  the  ingredients."1 

Where  a  composition  of  matter  is  of  certain  ingredients 
in  certain  proportions,  a  composition  of  the  same  ingredients 
in  other  proportions  is  a  different  thing,  and,  if  a  better  or 
a  cheaper  result  is  produced  by  the  change  in  proportions, 
or  a  different  result  in  kind,  the  changed  compound  is 
patentable.  But  a  slight  variation  from  stated  proportions 
is  not  a  substantial  variance,  does  not  avoid  infringement, 
and  is  not  patentable,  unless,  indeed,  the  exact  proportions 
had  been  hitherto  considered  essential. 

Combination  versus  Aggregation.  It  is  not  every 
putting  of  things  together  that  constitutes  a  patentable 
invention.  Thus,  if  one  takes  a  common  hammer  and 
puts  an  awl  into  one  end  of  the  handle  and  a  screw-driver 
blade  into  the  other,  this  is  not  a  combination  that  consti- 
tutes a  patentable  novelty.     The  law  denominates  such  an 

1    Matthews  vs.  Skates,  i  Fisher's  Pat.  Cases,  bog. 


Manual  of  Patent  Law.  33 


assemblage  of  parts  a  mere  aggregation  and  not  a  patent- 
able combination. 

The  elements  of  a  patentable  combination  must  co-act ; 
the  action  of  one  element  must  influence  the  action  of  the 
other  elements,  and  all  work  together  toward  a  common 
end.  "A  combination  in  mechanism  must  consist  of  dis- 
tinct mechanical  parts,  having  some  relation  to  each 
"  other,  and  each  having  some  function  in  the  organism. M1 
All  the  parts  of  a  combination  must  "  co-act  in  producing 
"  the  result  claimed  for  a  combination."2 

Form,  Size,  and  Proportions.  As  a  general  rule, 
an  alteration  of  the  form,  size,  or  proportions  of  an  exist- 
ing device  is  not  such  a  change  as  to  produce  patentable 
novelty.3  Enlarging  or  diminishing  any  or  all  of  the 
parts  of  a  machine  or  manufacture  does  not  alter  or  change 
the  principle,  and  hence  is  not  patentably  novel.  But 
there  are  cases  in  which  form  is  of  the  essence  of  the 
invention,  and  then  change  of  form  may  alter  substantial 
identity.  In  the  matter  of  plows,  for  instance,  a  change  in 
the  form  of  the  share,  landside,  or  mold-board  may  consti- 
tute invention,  for  a  new  effect  may  be-  produced  on  the 
soil  thereby. 

In  a  case  which  came  before  the  United  States  Supreme 
Court,  where  the  alleged  invention  was  an  improvement  in 
plows,  Marshall,  the  most  distinguished  of  our  chief-justices, 
said:  "It  is  not  every  change  of  form  and  proportion 
"  which  is  declared  to  be  no  discovery,  but  that  which 
"  is  simply  a  change  of  form  or  proportions,  and  nothing 
"  more.     If,  by  changing  the  form  or  proportions,  a  new 


1  Yale  &  Greenleaf  Mfg.  Company  vs.  North,  J  Fisher's  Pat.  Cases,  287. 

2  Swift  vs.  Whisen,  3  Fisher's  Pat.  Cases,  357. 

3  Reutgen  vs.  Kanowrs,  1  Wash,  if  I,    Parker  vs.  Little,  3  Wash.  198. 


54  Manual  of   Patent  Law. 


"  effect  is  produced,  there  is  not  simply  a  change  of  form 
"  and  proportion,  but  a  change  of  principle  also."1 

In  a  later  case,  another  learned  judge  discoursed  lucidly 
upon  this  question,  as  follows:  "A  change  of  form  will 
"  not  do,  inasmuch  as  a  different  form  might  answer  all 
"  the  purposes  of  the  first  invention.  There  are  instru- 
"  ments  invented  in  which  the  particular  form  is  a  material 
"  part  of  the  discovery,  and  then  a  departure  from  the 
*'  form  would  be  a  substantial  departure,  because  the  form 
"  is  essential  to  the  invention.  But  there  are  many  manu- 
"  factures  where  the  particular  form  of  the  thing  is  not 
"  essential  to  its  utility,  and  there  may  be  a  departure  from 
"  that  form  and  still  a  valuable  instrument  be  constructed. 
"  Take  the  plaintiff's  wheel  for  an  illustration.  The  curved 
"  form  is  given  to  the  plates  to  allow  for  the  expansion  and 
"  contraction  of  the  plates  in  casting  the  chilled  rim.  But, 
"  for  the  purpose  of  making  allowance  for  contraction,  any 
"  other  form  involving  the  principle  of  that  allowance  may 
"  be  used,  and  there  would  obviously  be  no  substantial 
"  change  in  the  thing  manufactured,  because  the  particular 
"  form  given  by  the  first  inventor  is  not  essential  to  the 
"  production  of  the  instrument.  If  the  form  is  a  part  of 
"  the  thing  invented,  and  is  essential  to  its  value,  then 
u  a  change  from  the  form  is  a  substantial  change,  and  may 
"  be  the  means  of  producing  a  new  manufacture.  Take 
"  the  Blanchard  machine  as  an  illustration:  it  is  one  of 
'*  the  most  ingenious  machines  of  the  day,  and  is  con- 
"  structed  to  turn  irregular  forms  after  a  pattern,  such  as 
"  gunstocks,  lasts,  and  spokes  for  carriage -wheels.  Blan- 
"  chard,  in  his  machine,  cuts  the  block,  whether  for  a 
"  last,  or  a  gunstock,  or  a  spoke,  after  a  pattern,  by  means 


1     Davis  vs.  Pahner,  2  Brock. 


Manual  of  Patent  Law.  35 


"  of  rotating  cutters.  A  modification  of  this  machine  was 
"  made  and  set  up  as  a  new  machine,  and  claimed  not  to 
"  be  an  infringement.  Instead  of  rotating  cutters,  the 
"  cutters  were  made  stationary,  and  the  block  rotated.  It 
"  was  claimed  that  this  was  an  entirely  different  principle 
"  from  Blanchard's,  and  that  the  party  making  the  change 
"  had  not  violated  his  patent.  Now  any  person  of  common 
"  understanding  would  see  that  the  thing  could  be  done  in 
"that  way;  it  was  a  mere  difference  in  the  mechanical 
"  contrivance,  and  a  change  of  form,  in  which  there  was 
"  no  skill  and  no  ingenuity.  This  illustrates  the  difference 
"  between  a  change  of  form  and  a  substantial  change 
"involving  mind,  ingenuity,  and  invention."1 

Tests  of  Novelty.  It  is  a  general  principle,  that  an 
invention,  to  be  novel,  in  the  sense  of  the  patent  law,  must 
involve  one  of  two  things :  First,  A  difference  in  the  prin- 
ciple of  operation,  as  compared  with  any  prior  device;  or, 
Second,  A  different  result  in  kind. 

"  The  novelty  of  an  invention  is  either  the  manufacture 
"  produced,  or  the  manner  of  producing  an  old  one.  If 
"  the  patent  is  for  the  former,  it  must  be  for  something 
"  substantially  new,  different  from  what  was  before  known; 
"  if  the  latter,  the  mode  of  operation  must  be  different, 
"not  a  mere  change  of  the  form  or  proportions;  if  both 
"  are  the  same  in  principle,  structure,  mode  of  operation, 
"  and  produce  the  same  result,  they  are  not  new,  though 
"  there  may  be  a  variance  in  some  small  matter  for  the 
"  purpose  of  evasion,  or  as  a  color  for  a  patent."  Novelty 
consists  in  "  producing  a  new  substance,  or  an  old  one  m 
"  a  new  way,  by  new  machinery,  or  a  new  combination  of 

1    Many  vs.  jfagger,  i  Blatchford,  372. 


$6  Manual  of   Patent  Law. 


"  the  parts  of  an  old  one,  operating  in  a  peculiar,  better, 
"  cheaper,  or  quicker  method,  a  new  mechanical  employ- 
"  ment  of  principle  already  known."1 

"  We  think  it  may  safely  be  laid  down  as  a  general  rule, 
il  that,  where  the  machines  are  substantially  the  same,  and 
"  operate  in  the  same  manner  to  produce  the  same  result, 
"  they  must  be  in  principle  the  same.  I  say  substantially, 
"  in  order  to  exclude  all  formal  differences;  and,  when  I 
"  speak  of  the  same  result,  I  must  be  understood  as  meaning 
"  the  same  kind  of  result,  though  it  may  differ  in  extent."2 

"  The  inquiry  always  is,  whether  the  principle  of  the  two 
"  machines  is  the  same.  If  the  principle  on  which  the  ma- 
"  chinery  works  is  the  same,  and  the  effect  is  similar  in 
"  both,  in  contemplation  of  law  the  machines  are  iden- 
tical."3 

What  constitutes  an  identity  of  principle  has  been  already 
indicated.  When  two  machines  employ  either  the  same 
mechanical  powers,  or  such  substitutes  as  are  within  the 
knowledge  of  a  mechanic  skilled  in  the  business  to  which 
the  machines  appertain,  the  two  machines  operate  on  the 
same  principle;  otherwise  not. 

When  two  processes  have  the  same  steps  or  modes  of 
action,  or  such  substitutes  therefor  as  are  within  the 
knowledge  of  a  person  skilled  in  the  business  to  which 
the  processes  appertain,  then  they  involve  the  same  prin- 
ciple of  operation ;  otherwise  not. 

When  two  compositions  of  matter  have  the  same  ingre- 
dients in  the  same  proportions,  or  other  ingredients  which 
are,  within  the  knowledge  of  a  person  skilled  in  the  business 
to  which  the  compounds  appertain,  substitutes  therefor,  then 


1  Whitney  vs.  Emmett,  z  Bald-win,  311. 

2  Gray  vs.  James,  1  Peters,  jgS. 

3  Brooks  vs.  Bicknetl,   ?  McLean,  262. 


Manual  of  Patent  Law.  37 


the  two  compositions  of  matter  are  combined  upon  the 
same  principle;    otherwise  not. 

When  two  manufactures  have  the  same  or  similar  parts  or 
properties,  and  will  answer  a  similar  purpose  by  means  of 
similar  parts  or  properties,  then  they  are  constructed  upon 
the  same  principle,  and  not  otherwise. 

A  difference  of  result  in  kind  is  a  different  thing  from  a 
difference  of  result  in  degree.  When  of  two  machines  for 
making  nails,  one  will  produce  more  nails  of  the  same  kind" 
and  in  the  same  time  than  the  other,  that  is  a  mere  differ- 
ence in  degree  and  not  in  kind,  and  the  same  is  true  as  to 
any  two  machines  for  producing  articles  of  the  same  kind. 
When  of  two  processes,  say  for  dyeing  wool,  one  will  dye 
more  wool  in  the  same  time  than  the  other,  that  is  only 
a  difference  in  degree. 

Results  that  are  different  in  kind  must  have  different 
properties,  and  this  applies  directly  to  manufactures  and 
compositions,  as  well  as  to  effects  produced  by  machines 
and  processes.  In  comparing  an  alleged  invention  with 
some  prior  existing  thing,  in  order  to  ascertain  if  the 
invention  have  patentable  novelty,  it  may  be  inquired, — 
First,  Does  the  invention  involve  any  difference  of  prin- 
ciple in  operation?  or,  Second,  Does  it  produce  any  new 
result,  having  new  properties  and  answering  new  purposes? 
If  either  question  can  be  answered  in  the  affirmative,  then 
the  two  things  are  not  substantially  identical,  and  not 
otherwise. 

Bearing  of  Utility  upon  Novelty.  The  tests  of 
novelty,  as  just  presented,  are  only  applicable  in  full  force 
and  strictness  when  one  is  considering  the  question  of  in- 
fringement ;  that  is,  when  one  is  trying  to  ascertain  whether 
or  not  a  certain  thing  infringes  upon  a  certain  patent.     It 


$8  Manual  of  Patent  Law. 


has  already  been  stated,  that  a  thing  may  be  patentable,  and 
yet  be  an  infringement  of  a  prior  existing  patent ;  for  the 
thing  may  be  merely  an  improvement  upon  the  thing 
claimed  in  the  patent. 

When  an  invention  is  presented  at  the  Patent  Office  as 
subject-matter  for  a  patent,  the  question  of  novelty  comes 
up  under  a  different  aspect  from  the  question  of  substantial 
identity  in  a  patent  suit,  —  that  is,  a  mere  difference  of 
result  in  degree  may  be  almost  or  quite  conclusive  evidence 
of  patentability, — and,  if  it  can  be  shown  that  a  machine, 
process,  manufacture,  or  composition  of  matter  is  of  supe- 
rior utility  in  the  matter  of  cheapness  or  quality,  although 
the  result  be  the  same  in  kind  as  before,  that  is  strong  and 
often  conclusive  evidence  of  patentable  novelty,  and  this 
whether  the  prior  thing  with  which  the  alleged  invention  is 
compared  be  a  patented  thing  or  not. 

"  Where  the  utility  of  a  change  and  the  consequences 
■"  resulting  therefrom  (in  a  machine)  are  such  as  to  show 
"that  the  inventive  faculty  has  been  exercised, — though, 
"  in  point  of  fact,  the  change  was  the  result  of  accident, — 
"  the  requisite  test  of  a  sufficient  amount  of  invention  may 
"exist."1 

1 '  Whenever  the  change  in  the  arrangement  of  a  machine 
"  or  invention,  and  its  consequences  taken  together,  are 
"  considerable,  there  is  sufficiency  of  invention  to  support 
"  a  patent.  When  the  change,  however  minute,  leads  to 
"  consequences  and  results  of  great  practical  importance, 
"  this  condition  is  satisfied;  but  not  when  the  consequences 
"  are  inconsiderable,  and  the  change  also  inconsiderable."2 

And  not  only  when  the  patentability  of  an  alleged  inven- 
tion over  some  prior  thing  is  under  consideration,  but  when 

1  Everson  vs.  Ricard,  Law's  Digest,  422,  sec.  20. 

2  Jr'alsh,  ex  parte  Appeal  Cases,  Dist.  Columbia,  Law's  Digest,  423,  sec.  31. 


Manual  of  Patent  Law.  39 


in  considering  whether  a  certain  thing  is  an  infringement 
of   a  patent,   if   it  is  doubtful  whether   the   two  devices 
involve  the  same  principle  of  operation,  then  the  com- 
parative  utility  of   the  two  devices   under   consideration 
becomes  of  great  and  sometimes  paramount  importance. 
In  discussing  this  question,  a  learned  judge  said:    "  If  the 
'  changes  made  by  the  defendant  have  rendered  his  wheel 
'  one  of  greater  utility  than  the  plaintiff's,  such  utility  is 
'  evidence  that  some  new  principle,  or  mechanical  power, 
'  or  new  mode  of  operation,  producing  a  new  kind  of 
'  result,    has   been    introduced.      And    the   greater   such 
1  utility,  the  stronger  is  such  evidence.     And  if  a  mani- 

*  fest  and  very  high  degree  of  utility  is  obtained  by  such 

*  changes,  it  becomes  full  proof  and  conclusive,  that  a 
'  new  principle  or  mechanical  power,  or  new  mode  of 
'  operation,  producing  a  new  kind  of  result,  has  been 
1  introduced.  From  our  inability  to  penetrate  the  secrets 
'  of  nature,  we  may  not  be  able  to  detect  the  new  prin- 
'  ciple  or  power,  otherwise  than  by  its  effects.  But  this 
1  utility  must  be  derived  from  the  changes  introduced, — 
'  not  from  the  use  of  better  material,  or  greater  skill  or 
'  care  in  the  manufacture."1 

In  another  case,  the  learned  judge  said:  "If  one  ma- 
'  chine,  which  is  alleged  to  be  an  infringement  of  another, 
'  produces  a  different  result,  or,  in  other  words,  is  of 
'  greater  utility  than  the  preceding  machine,  it  may  be 
1  some  evidence  of  a  difference,  a  substantial  difference 
'  between  them;  and  the  utility  of  the  one  over  the  other 
1  may  be  so  great  as  to  be  satisfactory  evidence  that  some 
1  new  principle  is  involved,  and  that  it  is  not  substantially 
1  the  same.     This  is  sometimes  coupled,  too,  in  considering 


1    Many  vs.  Sizcr,  i  Fisher's  Pat.  Cases,  34-28. 


4o  Manual  of  Patent  Law 


u  the  evidence,  with  the  mechanical  differences.  The  me- 
"  chanical  differences  may  be  sufficient  to  show  that  the 
"  two  machines  are  not  substantially  the  same.  The  differ- 
"  ence  of  result  and  utility  may  be  so  great  as  to  be  satis- 
"  factory  to  the  jury.  They  may  be  authorized  to  receive 
"  it  as  satisfactory,  if  it  is  of  so  very  high  a  nature.  And 
"  it  may  be  that  neither  of  these  alone  would  be  satisfac- 
tory; yet  the  mechanical  difference  and  the  difference 
"  of  utility,  taken  together,  may  be  sufficient  to  satisfy  the 
"mind."1 
And  the  same  doctrine  runs  through  many  other  cases. 2 

Prior  Abandoned  Experiments.  The  novelty  of  a 
practical  and  successful  invention  can  not  be  destroyed  by 
the  exhibition  of  prior  abandoned  experiments  tending  in 
the  same  direction.  Nothing  short  of  a  practically  success- 
ful prior  invention,  actually  reduced  to  practice  and  (unless 
the  question  arises  in  connection  with  the  topic  of  prior 
invention,  a  subject  hereinafter  considered)  in  public  use, 
can  destroy  the  patentable  novelty  of  an  invention  which 
has  been  perfected,  and  made  practical  and  successful.3 

In  the  case  of  Cahoon  vs.  Ring  (vol.  i.  Fisher's  Patent 
Cases,  p.  409),  the  judge  said  to  the  jury,  of  an  alleged 
prior  machine  like  Cahoon's  seed-sower,  said  to  have  ex- 
isted prior  to  Cahoon's  invention:  "Should  you  find  that 
"  it  was  made  and  completed  prior  to  the  Cahoon  inven- 
"  tion,  and  that  it  does  embody  the  improvements  in  the 
"  Cahoon  patent,  as  already  defined  and  explained,   you 

1  "Johnson  vs.  Root,  I  Fisher's  Pat.  Cases,  362. 

2  yudson  vs.  Moore,  I  Fisher's  Pat.  Cases,  544.  Singer  vs.  Walmsley,  1  Fisher's  Pat. 
Cases,  558.  Hudson  vs.  Cope,  I  Fisher's  Pat.  Cases,  6rj.  Fames  vs.  Cook,  2  Fisher's  Pat. 
Cases,  146.  Magic  Ruffle  Co.  vs.  Douglas,  2  Fisher's  Pat.  Cases,  330.  Carter  vs.  Baker, 
4  Fisher's  Pat.  Cases,  404.    Stanley  Works  vs.  Sargent,  4  Fisher's  Pal.  Cases,  443. 

3  Washburn  vs.  Gould,  3  Story,  133.  Ball  vs.  Murry,  10  Pennsylvania,  112.  Howe  vs. 
Undcnuood,  1  Fisher's  Pat.  Cases,  160.     Hudson  vs.  Moore,  I  Fisher's  Pat.  Cases,  544. 


Manual  of  Patent   Law.  41 


'*  will  then  inquire  whether  it  was,  in  point  of  fact,  a  ma- 
"  chine  completed  and  reduced  to  practice,  in  contra- 
"  distinction  to  an  experimental  machine,  or  a  machine 
"made  by  the  supposed  inventor,  in  the  prosecution  of 
"experiments  and  inquiries;  and  that,  unless  it  appears 
"  to  your  satisfaction,  that  such  machine  was  actually  used 
"asa  seed-sower  in  sowing  seed  for  agricultural  purposes, 
"  you  are  warranted  in  presuming  that  it  was  a  mere  experi- 
"  merit;  and,  if  so,  you  are  instructed  that  it  would  not 
"  invalidate  the  plaintiff's  patent." 

In  the  celebrated  case  of  Goodyear  vs.  Day  (vol  ii.  Wal- 
lace, Jr.,  p.  298),  upon  Goodyear's  rubber  patent,  the 
judge  said:  "The  testimony  shows  that  many  persons 
"  had  made  experiments — that  they  had  used  sulphur,  lead, 
"and  heat — before  Goodyear's  patent,  and  probably  be- 
* '  fore  his  discovery.  But  to  what  purpose  ?  Their  experi- 
"  ments  ended  in  discovering  nothing,  except,  perhaps, 
' '  that  they  had  ruined  themselves.  The  great  difference 
"  between  them  and  Goodyear  is,  that  he  persisted  in  his 
"  experiments,  and  finally  succeeded  in  perfecting  a  valu- 
able discovery ;  and  they  failed.  It  is  usually  the  case, 
"  when  any  valuable  discovery  is  made,  or  any  new  machine 
"  of  great  utility  has  been  invented,  that  the  attention  of 
"the  public  has  been  turned  to  that  subject  previously; 
' '  and  that  many  persons  have  been  making  researches  and 
"  experiments.  Philosophers  and  mechanicians  may  have, 
"  in  some  measure,  anticipated,  in  their  speculations,  the 
"  possibility  or  probability  of  such  discovery  or  invention; 
"  many  experiments  may  have  been  unsuccessfully  tried, 
"  coming  very  near,  yet  falling  short  of  the  desired  result. 
"  They  have  produced  nothing  beneficial.  The  invention, 
"  when  perfected,  may  truly  be  said  to  be  the  culminating 
"  of  many  experiments,  not  only  by  the  inventor,  but  by 
6 


42  Manual   of   Patent   Law 


"  many  others,  and  he  may  have  profited  indirectly  by  the 
"unsuccessful  experiments  and  failures  of  others;  but  it 
"  gives  them  no  right  to  claim  a  share  of  the  honor  or  the 
"  profit  of  the  successful  inventor.  It  is  when  speculation 
"  has  been  reduced  to  practice,  when  experiment  has  re- 
"  suited  in  discovery,  and  when  that  discovery  has  been 
"perfected  by  patient  and  cautious  experiments, — when 
"  some  new  compound,  art,  manufacture,  or  machine  has 
"been  thus  produced,  which  is  useful  to  the  public,  that 
'*  the  party  making  it  becomes  a  public  benefactor,  and 
"  entitled  to  a  patent." 

In  a  subsequent  case,  the  learned  judge  quoted  the  above 
decision  in  the  case  of  Goodyear  vs.  Day,  and  then  said : 
"  So  I  say  in  reference  to  this  case:  it  does  not  matter  how 
"  many  experiments  have  been  tried  by  different  inventors, 
"  if  they  failed,  if  their  experiments  were  never  perfected, 
"  if  they  were  never  brought  into  use, — and,  by  that,  I  do 
"  not  mean  general  use,  put  to  perform  the  functions  of  the 
"  plaintiff's  machine  or  any  of  the  perfected  machines 
"of  the  day,  —  if  they  rested  in  experiment  alone,  they 
"  were  not  of  such  a  character  as  to  deprive  subsequent 
"  inventors  of  the  benefit  of  their  inventions,  if  they 
"brought  them  into  use.  The  man  who  brings  his  inven- 
"  tion  before  the  country,  and  into  actual  use,  is  the  one 
"  to  be  protected;  for  he  is  the  one  who  confers  a  benefit 
"  upon  the  country."1 

The  same  doctrine  is  fully  enunciated  in  at  least  one 
later  case.2 

As  it  is  purposed  to  discuss,  in  subsequent  pages,  what 
constitutes  a  public  use,  that  question  will  not  be  discussed 


1  Singer  vs.  Watmsley,  I  Fisher's  Pat.  Cases,  576. 

2  Hayden  vs.  Suffolk  Mfg.  Co.,  4  Fisher's  Pat.  Cases,  tot. 


Manual  of  Patent  Law.  43 


just  here;  but  we  will  content  ourselves,  now,  with  stating 
that  an  invention,  in  order  to  destroy  the  novelty  of  a  sub- 
sequent invention,  must  not  only  have  been  perfected,  but 
it  must  have  been  in  public  use.  The  reason  of  this  is  per- 
fectly plain,  when  we  remember  what  the  policy  of  the 
patent  law  is:  it  is  to  reward  the  man  who  first  gives 
the  public  the  benefit  of  the  discovery  or  invention;  and, 
if  an  alleged  prior  inventor  has  not  put  his  invention  into 
public  use,  —  that  is,  put  it  into  such  condition  that  the 
public  has  had,  or  might  have  had,  a  knowledge  of  the  in- 
vention,—  then  the  subsequent  inventor  who  does  fully 
disclose  the  invention  to  the  public,  is  the  one  that  does 
the  public  that  service  which  the  public  deems  worthy  of 
reward. 

The  topics  so  far  treated  in  this  chapter  have  referred 
solely  to  things  which  existed  prior  to  the  invention  of  the 
thing  under  consideration.  We  have  yet  to  consider  that 
though  an  inventor,  at  the  time  he  makes  his  invention, 
may  be  the  original  and  first  inventor,  in  the  sense  of  the 
patent  law,  yet  he  may  so  conduct  himself  afterward  with 
reference  to  the  invention,  that,  when  he  comes  to  make  his 
application  for  a  patent  thereon,  the  invention  may  have 
lost  its  patentable  novelty;  that  is,  he  may  so  act,  that  he 
will  be  adjudged  to  have  abandoned  his  invention  to  the 
public,  or  he  may  have  allowed  it  to  be  in  public  use 
for  more  than  two  years  prior  to  application, — and,  in 
either  case,  the  invention  will  have  lost  its  patentable 
novelty.  These  topics  of  abandonment  and  public  use  will 
be  discussed  farther  on. 


44  Manual  of  Patent  Law. 


CHAPTER    IV. 

UTILITY. 

THE  statute  requires  that  a  patentable  invention  must 
be  useful  as  well  as  new.  The  topic  of  patentable 
utility  can  be  soon  disposed  of.  It  has  two  phases  or 
aspects,  —  one  absolute  and  the  other  comparative.  The 
absolute  phase  is  this :  What  utility  must  an  invention  have 
to  render  it  patentable?  The  comparative  phase  is :  When 
an  alleged  invention  is  being  compared  with  some  prior 
thing,  in  order  to  ascertain  if  the  two  are  substantially 
identical,  does  the  alleged  invention  possess  such  superior 
utility  over  the  prior  thing  as  to  show  that  some  new  prin- 
ciple is  involved  in  its  operation  ? 

Absolute  Utility.  The  statute,  fn  requiring  that  a 
patentable  invention  shall  be  useful,  does  not  require  that 
it  shall  possess  any  high  degree  of  utility;  if  it  is  not  posi- 
tively noxious,  immoral,  or  hurtful,  and  possesses  any  utility, 
that  suffices.  It  need  not  be  more  useful  than  other  things 
of  its  class, — it  need  not  be  as  useful  even,  —  and  it  is 
of  no  moment  that  an  invention  will  not  accomplish  all 
that  a  sanguine  inventor  claimed  for  it.1  The  only  ques- 
tion is,  Does  the  invention  possess  any  utility?  Entire  and 
absolute  failure  to  accomplish  the  purpose  for  which  an  in- 
vention was  intended,  will  render  a  patent  granted  for  such 
an  invention  void ;  but,  if  it  will  accomplish  such  purpose 
in  any  degree,  that  is  sufficient. 

1    Eames  vs.  Cook,  2  Fisher's  Pal.  Cases,  146. 


Manual  of  Patent  Law.  45 


In  a  suit  brought  for  the  infringement  of  a  patent  on  a 
pump,  the  defendant  claimed  that  the  plaintiff's  pump,  in 
order  to  be  patentable,  must  be  better  than  other  pumps,  so 
as  to  supersede  the  pumps  before  in  use.  The  judge  said : 
"  I  do  not  so  understand  the  law.  .  .  All  that  the  law 
"  requires  is,  that  the  invention  should  not  be  frivolous,  or 
"  injurious  to  the  well-being,  good  policy,  or  sound  morals 
"  of  society.  The  word  useful,  therefore,  is  incorporated 
"  into  the  act  in  contradistinction  to  mischievous  or  im- 
"  moral.  .  .  Whether  it  be  more  or  less  useful,  is  a 
"  circumstance  very  material  to  the  interest  of  the  patentee, 
"  but  of  no  importance  to  the  public."1 

In  a  later  case,  the  judge  said:  "All  that  the  law  re- 
"  quires  is,  that  the  invention  shall  not  be  frivolous  or 
"  dangerous.  It  does  not  require  any  degree  of  utility;  it 
"  does  not  exact  that  the  subject  of  the  patent  shall  be 
"  better  than  anything  invented  before,  or  that  shall  come 
"after.  The  invention  shall  not  be  frivolous;  if  it  is 
"useful  at  all,  that  suffices. "2 

The  same  doctrine  is  fully  enunciated  in  many  other 
cases. 3 

But  an  entire  and  absolute  lack  of  utility  will  render 
a  patent  void.4 

Comparative  Utility.  The  utility  of  a  device,  as 
compared  with  that  of  a  prior  device  for  the  same  purpose, 
is  often  a  question  of  great  importance.  The  courts  hold 
that,  where  it  is  doubtful  whether  the  two  devices  do  not 


1  Lowell  vs.  Lewis,  I  Mason,  186. 

2  Hoffheins  vs.  Brandt,  3  Fisher's  Pat.  Cases,  236. 

3  Whitney  vs.  Emmett,  Baldwin's  Circuit  Court  Reports,  309.  Wilbur  vs.  Bcccin-r,  2 
Blatchford,  137.  McCormick  vs.  Many,  6  McLean,  336.  Farle  vs.  Sawyer,  4  Mason,  6. 
Bedford  vs.  Hunt,  t  Mason,  303.  JVintcrmute  vs.  Redtngton,  1  Fisher's  Pat.  Cases,  239.  Pagt 
vs.  Ferry,  1  Fisher's  Pat.  Cases,  208. 

I     LangtUn  VS.  Dc  Groat,  1  Paine,  203,  Law's  Digest,  435,  par.  52. 


4.6  Manual  of   Patent  Law 


involve  the  same  principle  of  operation,  their  comparative 
utility  may  be  taken  into  consideration.  If,  as  compared 
with  a  prior  device,  an  alleged  invention  possesses  superior 
utility,  that  is  evidence  going  to  show  that  the  later  device 
involves  a  different  principle  of  operation  from  the  former, 
and  hence  is  patentably  different;  and,  in  this  case,  there 
are  two  things  to  be  taken  into  consideration:  first,  the 
amount  of  apparent  change,  and,  second,  the  amount  of 
superior  utility.  If  the  change  is  small  and  the  increased 
utility  small,  that  is  weak  evidence  toward  establishing 
patentable  difference;  if  .the  change  is  small  and  the 
utility  largely  increased,  that  is  stronger  evidence  of  pat- 
entable difference;  and,  if  the  change  is  considerable  and 
the  increased  utility  considerable,  that  will  generally,  if 
not  always,  amount  to  conclusive  evidence  that  the  two 
things  are  not  substantially  identical.  This  subject  was  as 
fully  discussed  as  the  limits  of  this  work  will  allow,  in  the 
chapter  on  Novelty,  under  the  head  of  "  The  Bearing 
of  Utility  upon  Novelty,"  to  which  the  reader  is  referred, 
where  he  will  find  quotations  from  the  decisions  of  judges, 
and  other  cases  cited  in  the  foot-notes. 


Manual  of   Patent  Law.  47 


CHAPTER    V. 

PRIOR  USE. 

THE  statute  prescribes,  in  section  24  of  the  act  of  July 
8,  1870,  that  an  invention,  to  be  patentable,  must 
have  been  "  not  known  or  used  by  others  in  this  country, 
"  .  .  before  his  (the  inventor's)  invention  or  discovery 
"thereof." 

It  will  be  observed,  that  such  prior  use  or  knowledge,  in 
order  to  defeat  a  subsequent  patent,  must  be  in  this  country. 
A  mere  prior  use  in  a  foreign  country  will  not  invalidate  a 
patent  subsequently  granted  here  for  the  same  thing,  unless 
it  can  be  shown  that  the  alleged  inventor  derived  his  know- 
ledge from  the  foreign  use,  in  which  case  he  could  not 
legally  and  truly  make  oath  that  he  was  an  inventor  at  all. 
A  prior  use  in  a  foreign  country  must  not  be  confounded 
with  a  prior  foreign  publication  of  the  invention ;  for  that 
destroys  a  subsequent  inventor's  right  to  a  patent,  on  the 
ground  that  the  means  of  knowledge  of  the  invention  were 
in  the  possession  of  the  American  public  previous  to  the 
origination  of  the  same  by  the  subsequent  inventor,  so  that 
he  did  not  give  to  the  public  that  valuable  thing  which  the 
law  deems  worthy  of  a  reward. 

We  will  now  examine,  by  the  light  of  judicial  decisions, 
as  to  what  constitutes  such  a  prior  use  of  an  invention 
in  this  country  as  will  deprive  a  subsequent  inventor  of  a 
right  to  a  patent  therefor.  This  use,  let  it  be  remembered, 
is  a  use  "  by  others  "  than  the  inventor. 


48  Manual  of   Patent  Law 


In  the  case  of  Bedford  vs.  Hunt  (i  Mason,  302),  Judge 
Story  (p.  304)  uses  the  following  language:  "  It  has  been 
11  argued  by  the  plaintiff,  that  the  defense  set  up  by  the 
' '  statute  does  not  apply,  except  in  cases  where  the  inven- 
"  tion,  or  (as  the  statute  expresses  it)  the  thing  originally 
"  discovered,  has  been  before  generally  known,  and  in  gen- 
' '  eral  use,  among  persons  engaged  in  the  art  or  profession 
"  to  which  it  properly  belongs.  But  I  do  not  so  under- 
"  stand  the  language  of  the  statute.  To  entitle  a  person  to 
"  a  patent  as  a  first  inventor,  it  is  certainly  not  necessary 
"  for  him  to  establish  that  he  has  put  his  invention  into 
"  general  use,  or  that  he  has  made  it  generally  known  to 
"  artisans  engaged  in  the  same  business.  And  yet,  upon 
"  the  argument  we  are  considering,  unless  it  were  so  gener- 
"  ally  known  and  in  use,  he  would  be  defeated  by  a 
"  patentee  who  was  a  subsequent  independent  inventor. 
"  The  intent  of  the  statute  was  to  guard  against  defeating 
"  patents  by  setting  up  of  a  prior  invention  which  had 
"  never  been  reduced  to  practice.  If  it  were  the  mere 
'■*  speculation  of  a  philosopher  or  mechanician,  which  had 
"  never  been  tried  by  the  test  of  experience,  and  never 
"  put  into  actual  operation  by  him,  the  law  would  not 
u  deprive  a  subsequent  inventor,  who  had  employed  his 
"  labor  and  talents  in  putting  it  in  practice,  of  the  reward 
"  due  to  his  ingenuity  and  enterprise.  But,  if  the  first 
"  inventor  reduced  his  theory  to  practice,  and  put  his 
"  machine  or  other  invention  into  use,  the  law  never  could 
"  intend  that  the  greater  or  less  use,  in  which  it  might  be, 
"  or  the  more  or  less  widely  the  knowledge  of  its  existence 
"  might  circulate,  should  constitute  the  criterion  by  which 
"  to  decide  upon  the  validity  of  any  subsequent  patent  for 
"  the  same  invention.  I  .hold  it,  therefore,  to  be  the  true 
"  interpretation  of  this  part  of  the  statute,  that  any  patent 


Manual  of  Patent  Law.  49 


V  may  be  defeated  by  showing  that  the  thing  secured  by 
'*  the  patent  had  been  discovered  and  put  in  actual  use 
**  prior  to  the  discovery  of  the  patentee,  however  limited 
"  the  use  or  the  knowledge  of  the  prior  discovery  might 
"  have  been." 

This  was  one  of  the  first  cases  upon  prior  use.  It  dis- 
cusses, in  the  same  breath,  what  are,  now,  two  distinct 
topics  or  questions,  "  prior  use  "  and  "  prior  invention." 
The  topic  of  "  prior  use  "  comes  up  when  it  is  attempted 
to  show  that  a  patented  thing  had  been  in  use  prior  to  the 
invention  of  the  patentee,  and  this  without  reference  to  the 
question  as  to  whether  the  prior  user  intended  or  is  still 
intending  to  get  a  patent  therefor.  Indeed,  in  discussing 
prior  use,  it  is  taken  for  granted  that  a  prior  user  did  not 
intend  to  take  a  patent  for  the  invention  \  and,  upon  prin- 
ciple, the  real  question  is,  Was  the  prior  use  such  a  one 
that  the  public  had,  or  might  have  had,  a  knowledge  of  the 
invention?  The  name  given  to  such  a  use  as  this  is  that 
of  "public  use."  The  question  of  "prior  invention" 
comes  up  when  different  inventors  are  struggling  to  show, 
each  for  himself,  that  they  are  prior  inventors;  and  the 
principles  involved  are  substantially  other  and  different 
from  those  involved  in  the  discussion  of  prior  use,  as  will 
be  shown  in  a  subsequent  chapter. 

So  far,  then,  as  the  reasoning  of  the  judge,  in  the  above 
case,  applies  to  the  topic  of  prior  invention,  it  is  to  be  laid 
out  of  the  present  discussion,  involving  almost  the  bodily 
transfer  of  the  case  to  another  field.  But  the  actual  words 
of  the  judge  are  not  repugnant  to  the  belief  of  the  present 
writer,  that  a  "prior  use"  must  be  "public  use,"  to 
defeat  a  subsequent  patent.  The  judge  says  the  thing  must 
have  been  put  into  "actual  use,"  in  distinction  from  an 
experimental  use, — the  obvious  meaning  of  which  is,  that 
7 


50  Manual  of   Patent  Law. 


the  thing  must  have  been  put  into  use  for  business  purposes, 
for  profit,  which  constitutes,  as  will  be  hereafter  shown,  a 
' '  public  use. ' ' 

In  a  subsequent  case, — Adams  vs.  Edwards,  November, 
1848  (vol.  i.  Fisher's  Patent  Cases,  p.  1), — Judge  Wood- 
bury said  (p.  12) :  "  If  a  man  has  an  invention  and  uses  it 
"  privately,  and  nobody  knows  of  it,  then  the  use  of  it  can 
"  not  debar  another  person  from  inventing  or  patenting  it. 
"  What  is  the  evidence  of  a  public  use,  as  opposed  to  a 
"  private  use?  It  need  not  be  a  general  use  by  the  com- 
"  munity;  but  it  must  be  an  open  use,  however,  so  that  the 
"structure  and  modus  opera?idi  are  apparent."  And  on 
page  13 :  "  Was  the  use  public  in  these  cases,  is  one  chief 
"  ingredient  under  this  head.  Was  such  a  safe  as  Connor's 
"  used  by  the  community?  Was  it  actually  sold  in  the 
"stores?  .  .  But  if  one  man,  alone,  kept  it — made  it 
"  for  himself,  kept  it  in  his  counting-room  or  in  his  cellar, 
"  — it  would  be  a  private  use." 

The  judge  was  talking  about  "  prior  use  "  in  this  case, 
so  that  the  above  decision  is  fully  to  the  effect,  that  a 
"  prior  use,"  to  be  effective  against  a  subsequent  inventor, 
must  be  a  "  public  use." 

In  the  case  of  Many  vs.  Sizer,  January,  1849  (V0L  L 
Fisher's  Patent  Cases,  p.  17),  Judge  Sprague  said:  "The 
"  article  must  be  completed  for  public  use,  and  the  result 
"  must  be  known."  This  case  does  not  state  whether  the 
use  must  be  a  use  in  public  or  not. 

In  the  case  of  Parker  vs.  Hulme,  November,  1849  (voL 
i.  Fisher's  Patent  Cases,  p.  44),  Judge  Kane  said  (p.  53): 
"It  is  not  enough  for  the  defendant  to  show  that  wheels 
"  like  the  patented  ones  were  made,  but  that  he  must  also 
"  show  that  they  were  used,  before  the  plaintiff's  inven- 
"  tion."     Neither  does  this  case  say  whether  or  not  the  use 


Manual  of   Patent  Law.  51 


must  be  in  public ;  but,  from  the  circumstances,  that  is  the 
natural  inference. 

In  the  case  of  Colt  vs.  Massachusetts  Arms  Company, 
August,  185 1  (vol.  i.  Fisher's  Patent  Cases,  p.  108),  Judge 
Woodbury  said  (p.  115):  "It  is  no  matter  whether  those 
"  prior  inventions  were  patented  or  not,  if  they  existed, 
"  if  they  were  discovered,  if  they  were  used."  Here, 
again,  is  no  explicit  declaration  as  to  whether  the  use  need 
be  in  public  or  only  private;  but  the  natural  inference  is, 
that  it  must  be  a  use  in  the  ordinary  manner  and  course  of 
business,  where  the  public  would  or  might  see  it, — in  other 
words,  a  use  in  public. 

The  case  of  Poppenhusen  vs.  New- York  Gutta-percha 
Comb  Company,  1858  (vol.  ii.  Fisher's  Patent  Cases,  p.  62 
—  see  p.  68),  agrees  with  the  three  cases  last  cited. 

In  the  case  of  Cahoon  vs.  Ring,  February,  1859  (vol.  i. 
Fisher's  Patent  Cases,  p.  397),  Judge  Clifford  said  to  the 
jury,  of  an  alleged  seed-sower  in  prior  use  (p.  409):  "  Un- 
"  less  it  appears  to  your  satisfaction  that  such  machine  was 
"  actually  used,  as  a  seed-sower,  in  sowing  seed  for  agricul- 
"  tural  purposes,  you  are  warranted  in  presuming  that  it 
"  was  a  mere  experiment."  And  again :  "  Upon  this  same 
"  subject  you  are  also  instructed,  that,  as  a  single  specimen 
"  only  of  such  a  machine  was  made,  .  .  if  you  find, 
"  from  the  evidence,  that  the  same  was  kept  in  his  own 
"  possession,  from  the  knowledge  of  the  public,  and  was 
"  subsequently  broken  up,  etc.,  .  .  so  that  the  public 
"  could  not  derive  the  knowledge  of  it  from  the  machine 
"itself,"  that  would  not  affect  the  subsequent  inventor's 
right  to  a  patent. 

The  case  of  Singer  vs.  Walmsley,  February,  i860  (vol.  i. 
Fisher's  Patent  Cases,  p.  558  —  see  p.  577),  quoting  and 
relying  upon  the  case  of  Treadwell  vs.  Bladen,  a  very  early 


52  Manual  of  Patent  Law, 


case  (vol.  iv.  Washington,  p.  704),  seems  to  recognize  the 
principle,  that  a  mere  experimental  prior  use  is  sufficient  to 
defeat  a  subsequent  patent,  —  not,  however,  saying  whether 
the  public  had  or  might  have  had  knowledge  of  such  ex- 
perimental use. 

In  the  case  of  the  Union  Sugar  Refinery  vs.  Matthiesen, 
November,  1865  (vol.  ii.  Fisher's  Patent  Cases,  p.  600), 
Judge  Clifford  held  (p.  624)  that  the  alleged  prior  machine 
must  have  been  "  reduced  to  practice  in  an  operative  ma- 
chine " —  that  it  must  have  been  a  "successful  reduction 
to  practice." 

The  patent  franchise  is  given  to  an  inventor,  because  he 
is  the  first  to  give  the  knowledge  of  his  invention  to  the 
public,  and,  if  some  one  else  has  not  done  this  before  him, 
there  is  no  reason  why  he  does  not  give  to  the  public  that 
thing  that  the  public  values.  Keeping  this  principle  and 
the  decisions  just  quoted  in  view,  we  have  no  hesitation  in 
saying  that  a  prior  use,  to  avail  against  a  subsequent  in- 
ventor, must  be  a  use  in  public, — a  use  that  the  public 
know  of,  or,  from  the  conditions  of  the  use,  had  full  liberty 
to  know  of.  What  constitutes  a  use  in  public,  will  be  dis- 
cussed subsequently  under  the  head  of  "  Public  Use." 

The  thing  that  is  alleged  to  have  been  in  prior  u?e  must 
not  only  have  been  used  in  public,  in  order  to  avail  against 
a  subsequent  inventor,  but  it  must  have  been  a  complete 
and  practically  successful  invention.  No  matter  how  many 
experiments  had  been  previously  made,  no  matter  if  a  subse- 
quent inventor  knew  all  about  them,  if  such  experiments 
stopped  short  of  perfection  and  practical  success,  they  can 
not  avail  against  the  subsequent  inventor.  ! 


1    Hoyden  vs.  Suffolk  Mfg.  Co.,  4  Fisher's  Pat.  Cases,  86.    Roberts  vs.  Reed  Torpedo  Co. 
j  Fisher's  Pat.  Cases,  62Q.     Coffin  vs.  Ogden,  j  Fisher's  Pat.  Cases,  640. 


Manual  of   Patent   Law.  53 


CHAPTER    VI. 

PRIOR  PUBLICATION. 

THE  statute  requires  (section  24  of  the  act  of  July  8, 
1870)  that  an  invention,  in  order  to  be  patentable, 
must  have  been  "  not  patented,  or  described  in  any  printed 
"  publication  in  this  or  any  foreign  country,  before  his 
"  (the  inventor's)  invention  or  discovery  thereof." 

When  discussing  the  topic  of  "  prior  use,"  it  was  seen 
that  the  mere  fact  of  the  use  of  an  invention  in  a  foreign 
country  prior  to  a  subsequent  inventor's  production  thereof, 
has  no  bearing  on  his  right  to  a  patent,  provided  he  did 
not  know  of  such  foreign  use.  The  case  is  different  with 
reference  to  prior  publication.  If  a  device  has  been  pat- 
ented or  described  in  a  printed  publication,  in  a  foreign 
country,  prior  to  the  invention  thereof  by  an  inventor  who 
seeks  a  patent  here,  that  is  fatal  to  such  an  inventor's  claim, 
just  as  much  as  though  the  patenting  or  describing  were 
done  here.  The  reason  for  this  distinction  is  plain.  The 
mere  fact  of  a  prior  use  in  a  foreign  country  raises  no  pre- 
sumption that  a  knowledge  of  such  use  is  accessible  to  the 
American  public,  because  such  use  is  essentially  a  local  as 
well  as  a  foreign  use;  while,  if  the  thing  were  patented  or 
described  in  a  printed  publication,  that  raises  a  presumption 
that  a  knowledge  of  the  thing  is  accessible  to  the  American 
public,  because  books  and  patent  records,  no  matter  in 
what  locality  produced,  find  their  way  to  all  parts  of  the 
civilized  world. 

It  should  be  remembered,  that  "  the  publication,  to  void 


54  Manual   of   Patent   Law. 


"  the  patent,  must  be  anterior  to  the  discovery  of  the 
"  patentee.  It  is  not  sufficient  that  it  should  be  anterior 
"  to  the  application  to  the  Commissioner  for  a  patent."1 

Where  it  is  attempted  to  rebut  or  destroy  the  novelty  of 
an  alleged  invention  by  a  prior  printed  publication  or  a 
prior  patent,  the  description  contained  in  such  publication 
or  patent  must  be  so  full,  clear,  exact,  and  precise,  that 
a  properly  skilled  person  could,  working  by  such  descrip- 
tion, and  without  any  inventions,  trials,  experiments,  or 
additions  of  his  own,  construct  or  put  in  practice  the 
invention ;  and  it,  when  so  constructed  or  put  in  practice, 
must  embody  the  same  principle  of  operation  and  produce 
the  same  result  as  the  alleged  invention,  or  such  prior 
publication  will  not  be  held  to  be  a  legal  anticipation. 
Mere  hints  at  a  thing,  or  general  directions  how  to  accom- 
plish a  result,  will  not  do;  the  prior  publication,  to  have 
any  effect,  must  be  as  full,  clear,  and  exact  as  the  specifica- 
tion of  a  patent  is  required  to  be. 

"  Where  the  defense  that  a  mechanical  contrivance, 
"  claimed  to  be  essentially  similar  to  that  covered  by  the 
"  plaintiff's  claim,  is  set  up,  and  the  proof  relied  on  is 
"  a  description  of  such  structure,  contained  in  a  printed 
"  publication,  such  description  must  have  been  sufficiently 
"  full  and  precise  to  have  enabled  a  mechanic  to  construct 
"  it,  and  must  also  have  been,  in  all  material  respects,  like 
"  that  covered  by  or  described  in  the  plaintiff's  patent."2 

In  one  case,  the  judge  held  that  a  book  of  plates  or 
drawings,  without  any  printed  description  of  the  plates,  is 
not  a  "  printed  publication ' '  in  the  sense  of  the  patent  law. ■ 


1  Bartholomew  vs.  Sawyer,    /"  Fisher's  Pat.  Cases,  520.     Jndson  -vs.  Cope,   1  Fisher's 
Pat.  Cases,  615. 

2  Parker  vs.  Stiles,  I  Fisher's  Pat.  Reports,  336.     Coleman  vs.  Liesor,  Law's  Digest,  609, 
par.  7. 

3  Jndson  vs.  Cope,  1  Fisher's  Pat.  Cases,  618. 


Manual  of   Patent   Law.  55 


In  another  case,  it  was  held  that  a  description  in  an 
imprinted  book  is  not  a  legal  anticipation  of  a  later  in- 
vention.1 

In  a  later  case,  brought  upon  a  patent  to  one  Clark,  for  a 
steam -regulator,  the  defendant  set  up  that  the  same  thing 
was  shown  in  a  prior  patent  to  one  Brunton.  In  his  charge 
to  the  jury,  the  judge  said:  "  You  will  then  look  at  Brun- 
u  ton's  description,  and  see  if  you  find  there  substantially 
"described  the  invention  of  Clark;  to  wit:  a  mechanism 
"so  organized  and  connected  to  a  steam-generator,  that, 
"  when  properly  set  by  the  engineer  or  operator,  at  a  given 
"  pressure  in  the  boiler  or  generator,  it  will,  automatically, 
"  by  force  of  the  pressure  in  the  boiler  or  generator,  open 
"  and  shut  the  damper,  as  the  pressure  in  the  boiler  or  gen- 
' '  erator  rises  above  or  falls  below  the  figure  at  which  the 
"  mechanism  is  set.  If  you  find  in  Brunton' s  patent  such 
"a  mechanism,  so  organized,  then,  of  course,  Clark's  in- 
dention is  not  new.  But,  if  you  do  not  find  such  a 
"  mechanism,  not  only  substantially  the  same  in  its  par- 
"  ticular  parts,  but  so  organized  as  that,  when  set  in 
"  operation,  it  will  produce  substantially  the  same  results 
"  in  substantially  the  same  way,  then  Clark's  patent  is 
"valid,  unless  the  change  made  by  Clark  is  so  obvious 
"  that  it  required  no  invention  or  labor  of  thought  to  make 
"  that  change."2 


1  Keantvs.  Wheat ley,  q  American  I. aiv  Register,  65. 

2  Clark  Pat.  Steam  &  Fire  Regulator  Co.  vs.  Copt-land,  J  J-islier's  Pat.  Cases 
erts  vs.  Dickey,  4  Fisher's  Pat.  Cases,  544. 


56  Manual  of   Patent  La 


CHAPTER    VII. 

PRIOR    INVENTION. 

SECTION  61,  paragraph  second,  of  the  act  of  July 
8,  1870,  makes  it  a  good  defense  against  an  action 
on  a  patent,  brought  by  a  patentee,  "  that  he  had  surrep- 
"  titiously  or  unjustly  obtained  the  patent  for  that  which 
"  was,  in  fact,  invented  by  another,  who  was  using  reason - 
"  able  diligence  in  adapting  and  perfecting  the  same." 

Prior  invention  is  a  different  thing  from  prior  use.  When 
the  latter  defense  is  set  up,  it  is  of  no  especial  consequence 
whether  the  inventor  of  the  prior  thing  was  intending  to 
get  a  patent  therefor  or  not ;  while,  in  setting  up  the  former, 
it  is  material  that  the  prior  inventor  intended  to  get  a 
patent.  Again,  in  setting  up  the  defense  of  prior  use, 
it  is  necessary  to  show  that  the  prior  device  was  reduced  to 
practice, — put  into  actual  operation  and  use, — and,  on 
principle,  this  use  should  be  one  accessible  to  the  public ; 
while,  in  setting  up  the  defense  of  prior  invention,  it  is  not 
necessary  that  the  invention  should  have  ever  been  per- 
fected or  put  in  practice,  or  into  actual  use  at  all.  We 
shall  see,  in  this  chapter,  that  the  first,  strongest,  and  best 
title  to  a  patent  is  that  of  an  inventor  making  a  prior  con- 
ception of  the  invention  in  point  of  time,  and  then  exer- 
cising due  diligence  afterward  in  perfecting  and  adapting 
it,  and  putting  it  in  practice;  and  that  this  title  will  prevail 
against  a  subsequent  inventor  who  has  obtained  a  patent. 

One  judge,  at  least,  has  distinctly  stated  a  difference  be- 
tween prior  invention  and  prior  use.     He  said :   "  Here  the 


Manual  of   Patent  Law.  57 


"  reliance  is  not  on  prior  use;  therefore,  it  is  of  no  conse- 
"  qtience  whether  it  (the  invention)  is  abandoned  or  not, 
"  but  whether  it  was  the  prior  invention."1 

The  question  of  prior  invention  comes  up  for  discussion 
before  the  Patent  Office  much  oftener  than  in  the  United 
States  courts.  This  topic  is  a  comparatively  rare  one  in 
the  courts,  but  it  comes  up  constantly  before  the  Patent 
Office  in  the  proceedings  technically  known  as  "  inter- 
ferences," which  are  proceedings  instituted  for  the  purpose 
of  determining  the  question  of  priority  of  invention  between 
two  or  more  parties  claiming  the  same  patentable  subject- 
matter.     An  interference  is  declared,  — 

First,  —  When  two  or  more  parties  have  applications 
pending  before  the  Office  at  the  same  time,  and  their  re- 
spective claims  conflict  in  whole  or  in  part.  When  two  or 
more  applications  are  pending  at  the  same  time,  in  each  of 
which  a  like  patentable  invention  is  shown  or  described, 
but  not  specifically  claimed  in  all  of  them. 

Second,  —  When  an  applicant,  having  been  rejected 
upon  an  unexpired  patent,  claims  to  have  made  the  in- 
vention before  the  patentee. 

Third, — When  an  applicant  for  a  reissue  embraces  in 
his  amended  claim  any  new  or  additional  description  of 
his  invention,  or  enlarges  his  claim,  or  makes  a  new  one, 
and  thereby  includes  therein  anything  which  has  been 
claimed  or  shown  in  any  patent  granted  subsequent  to 
the  date  of  his  original  application,  or  in  any  pending 
application ;  provided  there  is  reason  to  suppose  that  such 
subsequent  applicant  or  patentee  may  be  the  first  in- 
ventor. 

1    Colt  vs.  Massachusetts  Arms  0.t  i  Fisher* s- Pat.  Casts,  n6. 


58  Manual   of   Patent   Law. 


The  fact  that  one  of  the  parties  has  already  obtained 
a  patent,  does  not  prevent  an  interference;  for,  although 
the  Commissioner  has  no  power  to  cancel  a  patent  already 
issued,  he  may,  if  he  finds  that  another  person  was  the 
prior  inventor,  give  him  a  patent  also,  and  thus  place  both 
parties  on  an  equal  footing  before  the  courts  and  the 
public. 

The  cases  in  the  courts  which  have  distinctively  touched 
upon  the  topic  of  prior  invention  are  so  few  in  number, 
that  we  can,  perhaps,  treat  the  topic  in  no  better  manner 
than  to  cite  these  decisions,  or  at  least  the  greater  part  of 
them,  chronologically,  and  then  deduce  certain  rules  there- 
from. 

In  the  case  of  Reed  vs.  Cutter  (vol.  i.  Story,  p.  590), 
tried  in  October,  1841,  Judge  Story  said  (p.  599):  "  In  a 
"  race  of  diligence  between  two  independent  inventors,  he 
"  who  first  reduces  his  invention  to  a  fixed,  positive,  and 
"  practical  form  would  seem  to  be  entitled  to  a  priority 
"of  right  to  a  patent  therefor.  The  clause  .  .  now 
"  under  consideration  seems  to  qualify  that  right,  by  pro- 
"  viding  that,  in  such  cases,  he  who  invents  first  shall  have 
"  the  prior  right,  if  he  is  using  reasonable  diligence  in 
"  adapting  and  perfecting  the  same,  although  the  second 
"  inventor  has,  in  fact,  first  perfected  the  same,  and  re- 
"  duced  the  same  to  practice  in  a  positive  form."1 

The  principles  set  forth  in  the  case  just  cited  were  recog- 
nized and  followed  in  the  case  of  Colt  vs.  Massachusetts 
Arms  Company  (vol.  i.  Fisher's  Patent  Cases,  p.  108), 
August,  1 85 1,  where  two  patents  were  in  conflict.  Judge 
Woodbury  instructed  the  jury  that  they  might  go  back  and 
find  who  made  the  prior  invention;    he  said   (p.    120): 


1     Woodcock  vs.  Parker,  I  Gal. 


Manual  of   Patent  Law.  59 


• 'The  date  of  the  invention  is  the  date  of  the  discovery 
"  involved,  and  the  attempt  to  embody  that  in  some  ma- 
"  chine  —  not  the  date  of  perfecting  the  instrument.  .  . 
"If  the  invention  was  made  — if  it  was  set  forth  in  a 
"  machine  which  would  and  did  discharge  a  fire,  —  that  is 
"  all  which  is  necessary  to  constitute  the  invention." 

In  the  case  of  Ransom  vs.  The  Mayor  of  New- York  (vol. 
i.  Fisher's  Patent  Cases,  p.  252),  December,  1856,  Judge 
Hall  said  (p.  272):  "If  the  plaintiffs  did  not  use  reason- 
able diligence  to  perfect  the  invention  patented,  after  the 
"  idea  of  it  was  conceived,  and  in  the  meantime  other 
"persons  not  only  conceived  the  idea,  but  perfected  the 
"  invention,  and  practically  applied  it  to  public  use,  before 
"  the  invention  of  the  plaintiffs  had  been  so  far  perfected 
"  that  it  could  be  applied  to  practical  use,  the  plaintiffs' 
"  patent  is  void,  because  they  were  not  the  first  and  original 
"  inventors  of  the  thing  patented." 

In  the  case  of  Johnson  vs.  Root  (vol.  i.  Fisher's  Patent 
Cases,  p.  351),  October,  1858,  Judge  Sprague  said  (p.  369) : 
"If,  gentlemen,  the  invention  was  perfected,  —  if  Mr. 
"Johnson  used  reasonable  diligence  to  perfect  it, — 'then 
"  he  had  a  right  to  have  it  incorporated  into  his  patent, 
"  and  to  supersede  those  who  had  intervened  between  his 
"  first  invention  or  discovery  and  his  subsequent  taking  out 
"  of  his  patent.  If  he  had  not  perfected  it,  and  did  not 
"  use  due  diligence  to  carry  it  into  effect,  and  in  the  mean- 
"  time,  before  he  got  his  patent,  somebody  else  had  invented 
"  and  used,  and  incorporated  into  a  useful,  practical  ma- 
"  chine,  that  mode  of  feeding,  then  he  could  not,  by  a 
"subsequent  patent,  appropriate  to  himself  what  was  em- 
"  braced  in  the  former  machine." 

The  case  of  Ellithorpe  vs.  Robertson  (vol.  ii.  Fisher's 
Patent  Cases,  p.  8^),  February,  1859,  was  an  interference 


6o  Manual   of   Patent   Law. 


case  carried  to  the  United  States  court.  Judge  Ingersoll 
said  (p.  85):  "  To  defeat  a  patent  which  has  been  issued, 
"it  is  not  enough  that  some  one,  before  the  patentee,  con- 
"  ceived  the  idea  of  effecting  what  the  patentee  accom- 
"  plished.  To  constitute  such  a  prior  invention  as  will 
"  avoid  a  patent  that  has  been  granted,  it  must  be  made  to 
"  appear  that  some  one,  before  the  patentee,  not  only  con- 
"  ceived  the  idea  of  doing  what  the  patentee  has  done,  but, 
"  also,  that  he  reduced  his  idea  to  practice,  and  embodied 
"it  in  some  practical  and  useful  form.  The  idea  must 
"  have  been  carried  into  practical  operation.  The  making 
"  of  drawings  of  conceived  ideas  is  not  such  an  embodi- 
"  ment  of  such  conceived  ideas  into  practical  and  useful 
"  form  as  will  defeat  a  patent  which  has  been  granted." 

In  order  to  comprehend  the  exact  force  of  the  words 
just  quoted,  it  must  be  taken  into  consideration,  that  the 
later  applicant  for  the  patent  did  not  allege  in  his  bill 
of  complaint  to  the  court  that  he  had  -  used  reasonable 
diligence  in  adapting  and  perfecting  his  invention  (see 
foot  of  page  86,  etc.),  so  that  this  decision  applies  only 
where  one  party  has  a  patent  and  the  other  can  not  show,  in 
addition  to  prior  conception  on  his  part,  that  he  used  reason- 
able diligence  in  adapting  and  perfecting  the  invention. 

In  Cox  vs.  Griggs  (vol.  ii.  Fisher's  Patent  Cases,  p.  174), 
April,  1 86 1,  Judge  Drummond  said  (p.  176):  "  It  is  the 
"  right  and  privilege  of  a  party,  when  an  idea  enters  his 
"mind  in  the  essential  form  of  invention,  —  inasmuch  as 
"  most  inventions  are  the  result  of  experiment,  trial,  and 
1 '  effort,  and  few  of  them  are  worked  out  by  mere  will,  — 
"  to  perfect,  by  experiment  and  reasonable  diligence,  his 
"  original  idea,  so  as  not  to  be  deprived  of  the  fruit  of  his 
"  skill  and  labor,  by  a  prior  patent,  if  he  is  the  first 
"  inventor." 


Manual  ok   Patent  Law.  6i 


There  are  other  decisions  to  the  same  effect  in  White  vs. 
Allen  (vol.  ii.  Fisher's  Patent  Cases,  p.  440 — see  p.  446), 
tried  in  November,  1863,  and  in  Reeves  vs.  Keystone  Bridge 
Company  (Patent  Office  Gazette  for  1872,  p.  466). 

From  these  cases,  a  few  plain  rules  can  be  deduced :  — 

First,  —  The  first,  best,  and  strongest  title  to  a  patent  is 
that  of  an  inventor  who  makes  the  first  conception  of  the 
invention  and  afterward  exercises  due  diligence  in  adapting 
and  perfecting  the  same.  To  such  a  title  as  this,  the  title 
of  an  inventor  who  was  subsequent  to  conceive,  but  first  to 
reduce  to  practice,  must  give  way,  as  well  as  the  title  of  a 
subsequent  inventor  who  was  the  first  to  take  out  a  patent. 

Second,  —  The  second  best  title  to  a  patent  is  that  of  an 
inventor  who  was  the  first  to  reduce  to  practice,  and  this 
without  reference  to  the  time  when  the  invention  was  con- 
ceived. It  will  not  prevail  against  an  inventor  who  was 
first  to  conceive  and  afterward  uses  due  diligence  in  adapt- 
ing and  perfecting  the  same ;  but  it  will  prevail  against  one 
whose  strongest  title  is  the  obtaining  of  a  patent. 

Third,  —  The  third  best  title  is  that  given  by  the  issue 
of  a  patent.  Such  a  title  as  this  must  give  way  to  the  title 
of  an  inventor  who  was  the  first  to  conceive  and  who  used 
due  diligence  afterward  in  adapting  and  perfecting  the 
invention,  and  also  to  the  title  of  an  inventor  who,  as 
compared  with  the  patentee,  was  the  first  to  reduce  to 
practice.  It  would  seem,  on  principle,  that  the  title  of 
the  first  applicant  for  a  patent  should  stand  on  the  same 
footing  as  that  of  a  party  who  was  first  to  procure  the  issue 
of  a  patent. 

Fourth,  —  It  would  seem,  on  principle,  that,  when  a 
party  has  none  of  the  three  titles  just  specified,  the  in- 
ventor should  prevail  who  can  show  a  continuous  line  of 
effort  to  adapt  and  perfect  back  to  the  earliest  date. 


62  Manual   of   Patent   Law 


Fifth,  —  In  the  absence  of  any  and  all  of  the  foregoing 
data  whereon  to  base  a  decision,  it  would  seem,  on  prin- 
ciple, that  the  inventor  should  prevail  who  was  the  first 
to  embody  or  portray  the  invention,  either  by  a  machine, 
model,  process,  or  drawing,  so  that  a  person  skilled  in  the 
art  to  which  it  appertains,  could  therefrom  reduce  it  to 
practice.  A  mere  oral  description  has  been  held  sufficient 
for  this  purpose. 

Conception  of  an  Invention.  It  becomes  impor- 
tant to  ascertain  what  constitutes  conception  of  an  inven- 
tion such  as  the  law  recognizes.  This  is  clearly  stated  by 
Judge  Lowell  as  follows:  "  Neither  does  it  mean  the  first 
"  moment  #at  which  he  (the  inventor)  conceived  the  idea 
"  that  it  would  be  a  good  thing  to  do  that.  It  means  not 
"  only  when  he  conceived  that  such  a  thing  would  be  a  de- 
"  sirable  thing  to  do,  but  when  he  had  conceived  the  idea 
"of  how  to  do  it  substantially  as  he  has  done  it."1  The 
result  to  be  effected  must  not  only  be  in  the  inventor's 
mind,  but  he  must  have  in  his  mind's  eye  substantially  the 
means  by  which  that  result  is  to  be  effected.  The  date 
of  such  conception  an  inventor  is  allowed  to  prove  by 
sketches  or  models  he  made  at  the  time,  or  even  by  declar- 
ations or  descriptions  he  gave  to  other  persons. 

There  is  no  limit  of  time  within  which^an  inventor  must 
perfect  and  mature  his  invention  j  that  is,  there  is  no  limit 
to  the  date  to  which  he  may  carry  back  the  date  of  his 
conception,  provided  he  can  show  that  he  exercised  due 
diligence  afterward  in  perfecting  and  adapting  it.  A  ma- 
chine might  be  so  complicated  that  a  long  series  of  year 
might  not  suffice  wherein  to  perfect  and  mature  it ;  but,  of 


1     Woodynan  vs.  Stivipson,  j  Fisher's  Pat.  Cases,  105. 


Manual   of   Patent   Law.  63 


course,  such  cases  are  rare.  The  simplicity  or  complexity 
of  the  invention  will  generally  give  a  criterion  upon  this 
point,  though  an  exception  to  this  rule  will  at  once  occur 
to  any  one  at  all  conversant  with  the  history  of  important 
American  inventions,  —  the  case  of  Goodyear,  inventor  of 
hard  rubber. 

Reasonable  Diligence.  The  one  important  qualifi- 
cation of  the  diligence  required,  is  that  it  shall  be  reason- 
able. Sickness,  poverty,  or  other  circumstances  beyond 
the  control  of  the  inventor,  may  excuse  his  laying  the 
invention  by  for  a  time ;  but  he  can  not  lay  the  invention 
by,  simply  because  it  is  pleasanter,  more  profitable,  or  more 
convenient  to  attend  to  something  else,  unless  such  consid- 
eration amounts  to  an  actual  necessity.  He  is  required  to 
devote  himself  to  the  invention  with  all  the  continuity  that 
is  compatible  with  the  discharge  of  the  duties  properly 
incumbent  upon  a  man  in  his  station,  occupation,  and 
general  situation.  The  plea  of  poverty  is  the  one  that  is, 
perhaps,  oftenest  set  up,  but  is  a  plea  that  requires  careful 
scrutiny. 

"  The  measure  of  property  which  one  must  possess  before 
"  he  is  required  to  exercise  any  diligence  to  prosecute  his 
"  right,  is  not  to  be  found  in  the  statute.  It  is  an  excuse 
"  very  readily  made,  which  yet  should  not  be  too  readily 
"  listened  to.  If  a  man  be  utterly  destitute  of  money, 
"  without  friends,  and  incapable  thereby  of  prosecuting  an 
"enterprise,  much  indulgence  may  be  shown  him;  but 
"where  he  has  the  means  of  carrying  on  enterprises  of  a 
"  kindred  sort,  equally  demanding  money  and  friends,  and 
"  does  carry  them  on,  his  election  to  pursue  those  other 
"  enterprises  will  not  be  regarded,  in  the  law,  as  an  excuse 
"  for  the  delay  in  the  one  where  valuable  rights  of  others, 


64  Manual   of   Patent   Law. 


"  equally  meritorious  as  himself,  and,  in  the  outset  of  their 
"  struggle,  equally  poor,  are  to  be  prejudiced.  An  election 
"  thus  made,  for  his  supposed  advantage  or  gratification  at 
"  the  time,  according  to  the  plainest  principles  of  equity, 
"  must  not  be  invoked  to  the  detriment  of  another  inno- 
' '  cent  party. ' ' x 

Two  Years'  Public  Use.  The  statute  allows  an  in- 
ventor to  put  his  invention  in  use  and  on  sale  for  a  period 
not  exceeding  two  years  prior  to  his  application  for  a  patent 
therefor,  and  it  has  been  supposed  that  this  clause  in  some 
way  affects  the  question  of  due  diligence.  Such  is  not  the 
fact.  The  purpose  and  intent  of  this  clause  is  to  permit  an 
inventor  to  use  and  sell  for  a  period  not  exceeding  two 
years  prior  to  his  application,  without  laying  himself  open 
to  a  charge  of  abandonment.  The  rights  of  rival  inventors 
as  to  priority  of  invention  are  to  be  settled  without  regard 
to  this  clause.  What  constitutes  "  public  use  "  and  "aban- 
donment "  will  be  hereinafter  discussed. 

Reduction  to  Practice.  There  are  two  things  re- 
quisite to  the  production  of  an  entire  and  complete  in- 
vention,—  first,  conception;  and,  second,  reduction  to 
practice.  We  have  seen  that  conception  consists  in  a 
distinct  apprehension,  in  the  inventor's  mind,  of  the  result 
to  be  attained,  and  the  means  or  principles  by  which  that 
result  is  to  be  reached.  That  step  which  completes  the 
invention  is  reduction  to  practice,  and  this  consists  in  the 
embodiment  of  the  principles  previously  conceived,  in 
tangible  materials,  —  the  making  of  a  machine,  manufac- 
ture, or  composition  of  matter,  or  the  actual  trial  of  a 
process,  —  in  accordance  with  such  principles. 


1     Wicker  sham  vs.  Sutler,  Supreme  Court  Dist.  of  Columbia, 


Manual   of   Patent   Law.  65 


The  Supreme  Court  of  the  District  of  Columbia  held,  in 
a  series  of  decisions,  that  the  making  of  drawings  is  a 
sufficient  reduction  to  practice,  and,  in  one  case  at  least, 
that  a  mere  oral  description  is  sufficient,  even  if  unaccom- 
panied by  a  drawing;1  but  we  have  little  hesitation  in 
saying,  that,  as  affecting  the  claims  of  rival  inventors,  an 
oral  or  written  description  or  a  drawing  is  not,  in  the  sense 
of  the  patent  law,  a  reduction  to  practice. 

In  the  case  of  Ellithorpe  vs.  Robertson  (vol.  ii.  Fisher's 
Patent  Cases,  p.  83),  February,  1859,  Judge  Ingersoll  said 
(p.  86):  "  The  making  of  drawings  of  conceived  ideas  is 
"  not  such  an  embodiment  of  such  conceived  ideas  into 
"  practical  and  useful  form  as  will  defeat  a  patent  which 
"  has  been  granted."  The  spirit  of  this  decision  is  in 
perfect  accord  with  many  previous  cases. 

There  is  no  authoritative  decision  of  an  United  States 
court,  as  to  what  constitutes  a  reduction  to  practice,  when 
the  topic  of  priority  of  invention  is  under  discussion,  and 
we  can  only  be  guided  by  principles  which  are  applicable 
to  analogous  questions  and  by  the  practice  of  the  Patent 
Office.  In  discussing  the  question  of  "  prior  use,"  we  saw 
that,  when  that  defense  is  set  up  against  a  patent,  the  alleged 
prior  machine  or  other  device  must  have  been  completed 
and  put  into  actual  use,  and  that,  on  principle,  sustained 
by  the  weight  of  authorities,  this  use  should  have  been 
a  public  use.  The  case  just  cited  shows  that  drawings 
alone  can  not  constitute  a  reduction  to  practice  in  any 
case,  so  that  reduction  to  practice  requires  at  least  the 
production  of  an  operative  machine  or  process.  That  is 
all  that  is  required  by  the  Patent  Office,  and  it  is  all,  as  the 
present  writer  believes,  that  an  United  States  court  would 


1    Stephenson  vs.  Hows,  1S54.     Eames  vs.  Richards,  sSjg.     Dietz  vs.  Rurnham,  185Q. 
Gibbs  vs.  Johnson,  i860. 


66  Manual  of   Patent  Law. 


require.  There  is  and  must  be  a  material  difference  be- 
tween the  questions  of  "prior  use"  and  "prior  inven- 
tion." "Prior  use"  does  not  contemplate  an  intention, 
on  the  part  of  the  originator  of  the  alleged  prior  thing,  to 
take  out  a  patent  therefor;  and  it  is  plain,  that,  unless  the 
alleged  prior  thing  has  been  in  public  use,  the  public  has 
derived  no  benefit  therefrom,  and  the  subsequent  inventor, 
who  does  give  the  invention  to  the  public,  should  not  be 
deprived  of  his  reward.  But  "  prior  invention  "  contem- 
plates an  intention  to  take  out  a  patent,  and  thus  give  the 
invention  to  the  public ;  and,  hence,  the  reason  fails  which 
would  otherwise  require  an  actual  use  of  the  machine  or 
process,  or  its  use  in  public,  though  it  would  seem  only 
right  and  reasonable  that  the  machine,  or  process,  or  com- 
pound, should  have  been  so  far  perfected  and  tried,  that  its 
result  should  be  certain  and  known.  This  subject  was 
thoroughly  examined  by  S.  H.  Hodges,  chief  of  the  board 
of  examiners-in-chief  in  the  United  States  Patent  Office, 
and  the  result  published  in  the  numbers  of  the  American 
Law  Register  for  October  and  November,  1872.  The  first 
of  his  conclusions,  at  the  end  of  his  essay,  is,  — 

"  1.  Before  an  invention  can  be  considered  as  having 
"  been  so  reduced  to  practice  as  to  give  its  author,  without 
"  further  effort  on  his  part,  an  irrefragable  title  to  it,  if  duly 
"  assured,  it  must  have  been  embodied  in  a  practical  work- 
"  ing  machine,  capable  of  being  operated  to  perform  its 
"  intended  functions  for  business  purposes.  If  not  capable 
"  of  such  embodiment,  it  must  have  been  brought  to  an 
"  equivalent  state  of  perfection  in  some  other  way.  Upon 
"  this  point,  there  is  no  conflict  in  our  judicial  tribunals." 

With  this  statement  of  law,  the  present  writer  perfectly 
concurs.  More  than  this,  neither  the  decisions  nor  the 
principles  of  the  law  requires.     The  reason,  and  perhaps 


Manual  of  Patent  Law.  67 


the  only  reason,  for  requiring  that  an  invention  (supposing 
it  to  be  a  machine)  shall  be  embodied  in  an  operative 
mechanism,  in  order  to  constitute  the  whole  of  an  inven- 
tion, is,  that  it  may  be  made  certain  that  the  new  machine 
will  work  practically,  —  a  thing  that  can  not  be  known  till 
an  operative  mechanism  is  constructed;  for  many  an  in- 
vention, that  looks  entirely  feasible  in  a  drawing,  developes 
some  practical  and  oftentimes  insurmountable  difficulty 
when  put  into  actual  construction. 

The  reason  that  underlies  the  requirement  of  actual  use 
in  a  way  and  manner  accessible  to  the  public  knowledge, 
when  the  defense  of  prior  use  is  set  up,  is,  as  we  have  seen, 
quite  another  thing.  Although,  by  prior  conception  and 
reasonable  diligence  in  reduction  to  practice,  an  inventor 
may  acquire  what  is  at  the  time  an  irrefragable  and  im- 
pregnable title  to  a  patent,  yet  he  may,  by  subsequent 
delay  and  neglect,  lose  such  right  by  abandonment  to  the 
public.  He  may  also  lose  his  right,  by  allowing  the  inven- 
tion to  be  in  public  use  for  more  than  two  years  prior 
to  his  application  for  a  patent  therefor. 

In  the  next  two  chapters,  we  shall  see  what  constitutes 
"  public  use  "  and  "  abandonment." 


68  Manual   of   Patent   Law. 


CHAPTER    VIII. 

PUBLIC  USE. 

THE  statute,  sections  24  and  61  of  the  act  of  July  8, 
1870,  requires  that  an  invention,  in  order  to  be 
patentable,  must  not  have  been  "  in  public  use  or  on  sale 
"  for  more  than  two  years  prior  to  his  (the  inventor's)  ap- 
"  plication"  for  patent  therefor.  We  will  now  see  what 
constitutes  a  "  public  use  "  in  the  sense  of  the  patent  law. 

The  use,  to  be  a  a  public  use,  must  be  with  the  "  consent 
and  allowance  "  of  the  inventor. 

Previous  to  the  act  of  March  3,  1839,  the  invention  was 
allowed  no  public  use  whatever  previous  to  application; 
but,  since  that  time,  two  years'  use  and  sale  have  been  per- 
mitted. In  the  first  patent  act,  passed  April  10,  1790, 
it  was  required  that  the '  invention  should  not  have  been 
"  before  known  or  used,"  nothing  being  said  about  "  con- 
sent and  allowance."  This  act  was  superseded  by  the  act 
of  February  21,  1793,  but  the  wording  of  the  statute,  in 
this  respect,  was  not  changed.  The  act  of  1793  was  suPer_ 
seded  by  the  act  of  July  4,  1836,  but,  in  the  interval,  the 
courts  had  unanimously  construed  the  words  ' '  before 
known  or  used  "  to  mean  a  use  with  the  consent  and 
allowance  of  the  inventor.     Thus:  — 

"The  meaning  of  the  words  '  not  known  or  used,'  in 
"  paragraph  1  of  the  act  of  1793,  is,  that  the  invention  for 
"  which  a  patent  is  sought,  must  not  have  been  known  or 
"  used  by  others.  .  .  If,  before  his  application,  his 
"  invention  should  be  pirated  by  another,  or  used  without 


M  a  nual   of   Paten t  L  a  w  .  69 


"  his  consent,  such  knowledge  or  use  will  not  invalidate 
"  the  patent."1 

This  was  a  decision  by  the  Supreme  Court,  and,  of 
course,  settled  the  matter;  but  there  are  numerous  de- 
risions of  the  circuit  courts  to  the  same  effect.2 

When  the  act  of  1836  was  drawn,  this  construction  of 
the  courts  was  put  into  the  statute,  in  terms,  and  was  kept 
there  till  the  act  of  1870,  when  it  was  left  out,  but  it  is 
there  by  construction.  The  act  of  1839  merely  put  back 
the  time  previous  to  which  no  public  use  would  be  allowed 
two  years,  but  did  not  affect  the  question  under  considera- 
tion, except  to  make  it  still  clearer,  that  a  use,  to  be  a 
public  use,  must  be  with  the  consent  and  allowance  of  the 
inventor;  so  that  a  use  unknown  to  the  inventor,  or,  if 
known  to  him,  carried  on  against  his  will,  is  not  a  public 
use  in  the  sense  of  the  statute. 

"If  it  were  necessary  for  the  inventor  to  employ  others 
"  to  assist  him  in  the  original  structure  or  use  by  himself, 
"  .     .     such  use  will  not  invalidate  the  patent."3 

"The  patentee  may  make  experiments  with  his  inven- 
"  tion,  or  disclose  it  to  those  he  may  wish  to  consult,  or 
"  employ  others  to  assist  him  in  making  and  using  it, 
"without  impairing  his  patent.  The  time  during  which 
"  the  thing  patented  had  been  known  or  used,  is  not  mate- 
"  rial;  the  criterion  is  its  public,  not  its  private  or  surrep- 
"  titious  use."4 

"  If  the  use  be  merely  experimental,  to  ascertain  its  value 
"  or  utility,  or  the  §uccess  of  the  invention,  by  putting  it 
"  in  practice,  that  is  not  such  a  use  as  will  deprive  the 
"  inventor  of  his  title."5 

1  Pennock  vs.  Dialogue,  2  Peters,  18-iQ  :  182Q. 

2  ll'liitneyvs.  Emmet/,  1  Baldwin,  309  :  1831.     Ryan  vs.  Goodwin,  3  Sumner,  ji8  :  1831). 

3  Pennock  vs.  Dialogue,  >  Peters.  18  :  Supreme  Court,  1829. 
\  Whitney  vs.  Rmnictt,  1  Baldwin,  301)  :  1831. 

5    Ryan  vs.  Goodwin,  3  Sumner,  318 :  1839. 


70  Manual  of   Patent   Law 


"  The  use  .  .  must  be  either  generally  allowed  or 
"  acquiesced  in,,  or  at  least  unlimited  in  time,  extent,  or 
"  object.  A  mere  occasional  use  by  the  inventor,  in  trying 
"  experiments,  or  a  temporary  use  by  a  few  persons,  as 
u  an  act  of  personal  accommodation  or  kindness,  for  a 
"  short  and  limited  period,  will  not  take  away  a  right 
"to  a  patent."1 

"  The  patentee  may  forfeit  his  right  to  the  invention,  if 
"  he  constructs  it  and  vends  it  to  others  to  use,  or  if  he  uses 
"  it  publicly  himself  in  the  ordinary  way  of  a  public  use 
"of  a  machine,  at  any  time  prior  to  the  period  of  two 
"  years  before  he  makes  application  for  a  patent.  That  is, 
"he  is  not  allowed  to  derive  any  benefit  from  the  sale  or  use 
"  of  his  machine,  without  forfeiting  his  right,  except 
"  within  two  years  prior  to  the  time  he  makes  application. 
"  If  the  machine  was  complete  when  it  was  constructed, 
"  .  .  and  if  the  patentee  put  it  into  public  use,  or  put  it 
"into  operation  himself  publicly,  deriving  profit  from  it, 
"  and  having  no  view  of  further  improvements,  or  of  ascer- 
"  taining  its  defects,  then,  this  use  having  occurred  anterior 
"  to  the  two  years,  the  effect  would  be  to  work  a  forfeiture. 
"It  is  proper  to  say,  however,  that  this  ground  of  forfeit- 
"  ure  is  not  favored  in  law,  but  is  regarded  as  being  some- 
"  what  harsh  in  its  operation  on  individual  rights.  The 
"  evidence,  therefore,  should  be  quite  clear,  that  the  use 
"  was  not  by  the  way  of  experiment,  or  for  the  purpose 
"  of  perfecting  the  machine,  in  order  to  justify  the  con- 
"  elusion  that  the  patentee  had  forfeited  his  right  to  the 
"  improvement."2 

In  one  case  it  was  alleged  and  proved,  that  the  inventor 
had  allowed  the  public  use  of  his  invention,  an  eight-wheel 

1  Wyeth  vs.  Stone,  I  Story,  281 :  1840. 

2  Pitts  vs.  Hall,  1  Fisher's  Pat.  Reports,  447-jtf- 


Manual  of   Patent  Law.  71 


car,  upon  the  Baltimore  and  Ohio  Railroad.  Of  this  the 
learned  Judge  Nelson  said:  "If  the  use  be  experimental, 
"  to  ascertain  the  value,  or  the  utility,  or  the  success  of  the 
"  thing  invented,  by  putting  it  into  practice  by  trial,  such 
"  use  will  not  deprive  the  patentee  of  his  right  to  the 
"  product  of  his  genius.  The  plaintiff,  therefore,  in  this 
"  case,  had  a  right  to  use  his  cars  on  the  Baltimore  and 
"  Ohio  Railroad,  by  way  of  trial  and  experiment,  and  to 
"  enter  into  stipulations  with  the  directors  of  the  road  for 
"  this  purpose,  without  any  forfeiture  of  his  rights."1 

In  a  later  case,  where  "  public  use  "  was  charged  against 
certain  machines,  Judge  Shepley  said:  "You  will,  then, 
"  consider  whether  the  machines  so  put  on  sale  or  in  public 
"  use,  were  effective,  operative,  successful  machines,  com- 
"  petent  to  do  the  work  which  that  invention  was  calculated 
"and  intended  to  perform;  and  then  you  will  consider 
"  whether  such  machines  were  put  on  sale  or  into  public 
"  use  as  matters  of  profit  and  gain,  or  whether  it  was  for  the 
"  mere  purpose  of  experiment  and  perfecting  the  inven- 
tion."2 

In  a  still  later  case,  it  was  held,  that  the  keeping  of  a 
pavement  for  six  years  on  a  public  street,  not  for  profit,  but 
for  trial,  was  not  a  public  use. 3 

From  these  decisions,  it  is  plain  that  the  fact  that  some 
publicity  has  been  given  to  an  invention,  is  of  no  account 
as  going  to  prove  a  public  use.  It  would  be  hardly  possible 
to  give  a  thing  greater  publicity  than  that  of  a  railway  car 
on  a  great  thoroughfare;  yet  that  was  held  not  to  amount 
to  a  public  use.  The  motive  with  which  an  act  is  done  is 
all  important  here.     If  an  invention  is  put  into  operation 

1  Winans  vs.  New-  York  and  Harlem  Railroad,  4  Fisher's  Pat.  Cases,  10. 

2  .  tmerican  Hide  &  Leather  Splitting  Or  Pressing  Machine  Co.  vs.  American  Tool  & 
Machine  Co.,  4  Fisher's  Pat.  Cases,  SOJ  :  1870. 

i    American  Nicholson  Pavement  Co.  vs.  City  of  Elisabeth,  3  QJjtcial  i'.acet/e,  322. 


72  Manual   of   Patent   Law 


for  profit,  that  would  seem  to  be  a  fatal  use;  but,  if  not,  it 
is  hardly  possible  to  show  that  such  use  is  not  merely  experi- 
mental. An  inventor  has  a  plain  right  to  put  his  invention 
in  practice,  even  for  a  number  of  years,  so  long  as  that  is 
done,  not  for  profit,  but  with  the  purpose  and  intent  to 
perfect  or  test  the  invention;  and  it  is  not  necessarily  fatal 
that  such  use  is  accessible  to  the  eyes  of  the  public,  though 
gross  negligence  in  this  regard  would  probably  be  fatal. 
The  inventor  can  safely  call  the  attention  of  other  persons 
to  the  working  of  his  invention,  for  the  purpose  of  getting 
their  judgment  upon  it.  This  forfeiture  is  one  that  the  law 
does  not  favor,  and  the  evidence  would  have  to  be  strong 
and  clear,  that  the  use  was  not  by  way  of  experiment  or 
test,  in  order  to  show  a  public  use.  The  question  as  to 
whether  the  invention  was  in  use  for  profit,  is  of  vital 
importance. 


Manual  of   Patent  Law.  73 


CHAPTER    IX. 

ABAND  ONMENT. 

ANOTHER  statutory  requirement  of  a  patentable  in- 
vention is,  that  it  shall  not  be  "  proved  to  have  been 
abandoned,"  and  section  61  of  the  act  of  July  8,  1870, 
makes  it  a  good  defense  to  an  action  brought  for  infringe- 
ment of  a  patent,  that  the  patented  thing  had  been  aban- 
doned. 

It  is  a  standard  remark  with  judges,  when  about  to 
discuss  this  topic,  that  it  is  a  very  difficult  one,  and  nearly 
akin  to  that  of  public  use.  It  is  difficult,  because  it  is 
always  a  question  of  fact,  —  that  is,  of  opinion,  —  whether 
an  invention  has  been  abandoned.  The  principles  of  law 
are  plain  and  simple  enough :  it  is  their  application  to  any 
particular  statement  of  facts  that  constitutes  the  difficulty. 
An  invention  may  be  abandoned  at  any  stage  of  its  exist- 
ence, from  first  conception  to  final  expiration  of  the  patent 
therefor;  but  the  facts  that  will  show  abandonment  differ 
widely  at  different  stages  of  the  invention. 

Abandonment  after  Conception  and  before  Re- 
duction to  Practice.  This  is  the  form  in  which  the 
question  comes  up  oftenest  for  discussion  j  and  it  is  exactly 
the  same  thing  as  the  question  of  "  reasonable  diligence  " 
in  adapting  and  perfecting  an  invention,  —  a  subject  that 
has  been  already  considered  in  the  chapter  on  "  Prior  In- 
vention." If  an  inventor  is  shown  to  have  exercised 
reasonable  diligence  in  reducing  his  invention  to  practice, 
10 


74  Manual  of  Patent  Law 


he  has  not  abandoned ;  if  not,  then  he  has  abandoned,  and 
an  abandonment  may  be  adjudged  against  an  inventor, 
irrespective  of  his  intention  to  abandon.  If  an  inventor, 
after  conception,  experiments  or  makes  a  model,  and  then 
does  nothing  more  about  the  matter  for  years,  when  his 
inaction  is  not  caused  by  poverty,  sickness,  or  other  con- 
trolling circumstances,  he  will,  as  against  the  claims  of 
another  and  subsequent  inventor,  who  has  conceived  and 
been  diligent  in  reducing  to  practice,  be  adjudged  to  have 
abandoned  the  invention.1 

In  a  suit  upon  a  sewing-machine  patent,  the  jury  were 
instructed  "  that  if  they  found  that  the  plaintiff,  after 
"  having  taken  the  machinery  out  of  the  frame,  .  .  laid 
"  the  machinery  aside,  as  something  incomplete  and  requir- 
"  ing  more  thought  and  experiment,  and  never  intending  to 
"  reconstruct  the  machine,  or  to  restore  the  needle-feed  in 
"  the  form  of  an  operative  sewing-machine,  without  mate- 
u  rial  modifications  or  alterations,  but  only  to  preserve  the 
' '  parts  to  be  used  in  other  inventions  as  circumstances 
"  might  arise,  then  the  jury  were  instructed  that  they 
"  would  be  fully  warranted  in  finding  that  he  deserted 
"and  abandoned  the  invention,  so  far  as  respects  the 
"  needle-feed ;  provided  they  also  found  that  he  did  no- 
"  thing  to  restore  the  needle-feed  in  the  form  of  an 
"operative  machine,  from  November  7,  1848,  to  the  last 
"  of  December,  1852,  or  the  first  of  January,  1853.  "2 

Abandonment  after  Reduction  to  Practice  and 
before  Application  can  take  place  as  well  as  before  re- 
duction to  practice.     Previous  to  the  act  of  March  3,  1839, 


1  Parkhnrst  vs.  Kinsman,  z  Fisher's  Pat.  Reports,  161.     Hansom  vs.  Mayor  of  New- 
York,  1  Fisher's  Pat.  Cases,  252,  p.  270. 

2  yohnson  vs.  Root,  2  Fisher's  Pat.  Cases,  30J. 


Manual  of  Patent  Law.  75 


allowing  two  years'  sale  and  use  prior  to  application,  this 
question  was  treated  as  identical  with  the  question  of 
"  public  use." 

In  Pennock  vs.  Dialogue  (vol.  iv.  Washington,  p.  544), 
1825,  the  judge  said:  "  If  an  inventor  makes  his  discovery 
"  public,  looks  on,  and  permits  others  freely  to  use  it, 
"  without  objection,  or  assertion  of  claim  to  the  invention, 
"  of  which  the  public  might  take  notice,  he  abandons  the 
"  inchoate  right  to  the  exclusive  use  of  the  invention  to 
"  which  a  patent  would  have  entitled  him,  had  it  been 
"applied  for  before  such  use;  and  we  think  it  makes  no 
"  difference  in  the  principle  that  the  article  so  publicly 
"used,  and  afterward  patented,  was  made  by  a  particular 
"  individual  who  did  so  by  the  private  permission  of  the 
"inventor."  "It  is  possible  that  the  inventor  may  not 
"  have  intended  to  give  the  benefit  of  his  discovery  to  the 
"  public.  But  it  is  not  a  question  of  intention  which  is 
"  involved  in  the  principle  which  we  have  laid  down,  but 
"  of  legal  inference,  resulting  from  the  conduct  of  the 
"  inventor,  and  affecting  the  interests  of  the  public." 

The  decision  in  Shaw  vs.  Cooper  (vol.  vii.  Peters,  p.  320) 
is  to  the  same  effect. 

In  Pitts  vs.  Hall  (vol.  i.  Fisher's  Patent  Reports,  p.  441), 
1 85 1,  Judge  Nelson  said  (p.  449):  "An  abandonment,  or 
"  dedication,  may  occur  within  the  two  years  (allowed  by 
"  the  act  of  March  3,  1839),  and  at  any  time  down  to  the 
"  procurement  of  the  patent.  The  mere  use  or  sale,  how- 
"  ever,  of  the  machine,  within  the  two  years,  will  not  alone 
"or  of  itself  work  an  abandonment.  .  .  The  use  or 
"  sale  must  be  accompanied  by  some  declarations  or  acts 
"  going  to  establish  an  intention  on  the  part  of  the  patentee 
"  to  give  to  the  public  the  benefit  of  his  improvement." 

In  a  later  case,  the  patentee  invented  his  improvement  in 


j6  Manual  of   Patent  Law. 


1849,  and  continued  to  experiment  and  perfect  his  invention 
until  1852,  but  did  not  apply  for  his  patent  till  1855;  but 
he  was  all  the  time  in  the  employ  of  one  who  held  a  prior 
and  controlling  patent,  which  prevented  the  use  of  his  im- 
provement, and  he  delayed  his  application  on  this  account. 
The  court  held  that  this  did  not  constitute  abandonment, 
notwithstanding  a  patent  for  the  same  thing  was  granted  to 
other  parties  in  Belgium,  June  16,  1853. 1 

In  the  case  of  Jordan  vs.  Dobson  (vol.  iv.  Fisher's  Patent 
Cases,  p.  232),  1870,  it  was  held  that  the  lapse  of  twenty- 
two  years  between  the  expiration  of  the  original  patent  and 
the  application  for  its  extension  by  Congress,  did  not  con- 
stitute abandonment;  but  the  facts  to  explain  this  do  not 
appear  in  the  case. 

In  the  case  of  the  American  Hide  and  Leather  Splitting 
and  Dressing  Machine  Company  7>s.  the  American  Tool  and 
Machine  Company  (vol.  iv.  Fisher's  Patent  Cases,  p.  284), 
1870,  it  was  held  that  an  inventor  might  so  freely  allow  the 
use  of  his  invention  within  the  two  years  immediately  pre- 
ceding his  application,  as  to  have  his  acts  amount  to  an 
abandonment  of  the  invention. 

Where  an  inventor  was  the  first  to  conceive  the  invention, 
and  used  due  diligence  afterward  in  reducing  the  same  to 
practice,  he  has  a  title  to  a  patent  therefor  which  can  be 
disturbed  by  no  other  inventor,  if  such  title  is  duly  asserted; 
but,  as  against  the  claims  of  a  rival  inventor,  there  is  no 
reason,  on  principle,  why  the  prior  inventor  should  not  be 
held  to  the  same  diligence  in  making  his  application  for  a 
patent  as  in  reducing  the  invention  to  practice.  The  prior 
inventor  would  not  be  allowed  to  unreasonably  delay  his 
application  for  a  patent  and  still  hold  good  his  claim 
against  a  more  diligent  subsequent  inventor. 

1     White  vs.  Allen,  2  Fisher's  Pat.  Cases,  440  :  1863. 


Manual  of  Patent  Law.  77 


Abandonment  after  Application,  and  before 
Grant  of  Patent,  may  take  place;  but  here  the  evi- 
dence would  need  to  be  so  strong  as  to  be  conclusive,  for 
the  filing  of  the  application  is  the  assertion  of  a  claim  to  a 
patent  in  the  strongest  possible  manner. 

In  one  case,  the  inventor  made  an  application  in  1836, 
rejected  in  1837;  he  renewed  in  1837,  and  got  a  second 
rejection  j  he  applied  a  third  time  and  failed ;  he  continued 
further  efforts  in  1839;  afterward  amended  and  finally  ob- 
tained his  patent,  on  appeal,  in  1843.  This  state  of  facts 
was  held  not  to  constitute  an  abandonment.1 

In  another  case,  the  original  application  was  filed  in 
1850,  but  was  finally  rejected  by  the  Commissioner  of 
Patents.  An  appeal  was  taken  to  the  Circuit  Court,  and 
not  decided  till  1856,  and  then  the  decision  of  the  Com- 
missioner was  affirmed.  A  new  Commissioner,  coming 
into  office,  granted  a  patent  February  24,  1857.  Held, 
that  this  delay  did  not  constitute  abandonment,  and  that 
an  applicant  can  not  be  prejudiced  by  the  laches  of  the 
Government  officers.2 

In  the  case  of  Sayles  vs.  the  Chicago  and  North-western 
Railway  Company  (vol.  ii.  Fisher's  Patent  Cases,  p.  523), 
1865,  a  similar  delay  of  five  years  occurred,  but  was  held 
not  to  constitute  abandonment. 

Excerpt  from  a  later  case:  "  The  next  objection  to  be 
"  noticed  is,  that  the  inventor  abandoned  his  invention  be- 
"  cause  his  application  for  a  patent,  which  was  made  April 
"12,  1855,  was  rejected  February  6,  1856,  and  because  he 
"  did  not  appeal  at  all  or  make  any  new  application  until 
"  March  25,  1864,  .  .  it  is  not  possible  to  hold  that  any 
"  use  of  the  invention,  without  the  consent  of  the  inventor, 


1  Adams  vs.  Fdwards,  I  Fisher's  Pat.  Cases,  I :  /8j$. 

2  Adams  vs.  ?oues,  r  Fisher's  Pat.  Cases,  527. 


78  Manual  of  Patent  Law. 


"while  his  application  for  a  patent  was  pending  in  the 
"  Patent  Office,  can  defeat  the  operation  of  the  letters- 
"  patent  after  they  are  duly  granted."1 

Abandonment  after  Patent  Granted.  "  Aban- 
"  donment,  or  dedication  to  the  public,  may  be  made  as 
"  well  after  patent  granted  as  before;  but,  where  the  patent 
"  has  actually  been  granted,  it  would  undoubtedly  require 
"a.  strong  case  to  prove  abandonment."2  Nothing  less 
than  deliberate  and  undisputed  dedication  to  the  public,  in 
set  terms,  would  probably  operate  as  an  abandonment  after 
patent  granted. 

The  Evidence  of  Abandonment  must,  in  any  case, 
be  very  clear  and  cogent.  Abandonment,  or  dedication,  is 
in  the  nature  of  a  forfeiture  of  a  right  which  the  law  does 
not  favor,  and  should  be  made  out  beyond  all  reasonable 
doubt.  It  must  be  proved,  never  presumed. 3  Mere  lapse 
of  time  proves  nothing.4 


1  Dental  Vulcanized  Rubber  Co.  vs.  Wetherbee,  3  Fisher's  Pat.  Cases,  qj  :  1866. 

2  Bell  vs.  Daniels,  1  Fisher's  Pat.  Cases,  378:  1858. 

3  Pitts  vs.  Hall,  2  Blatchford,  238.  McCormick  vs.  Seymour,  2  Blatchford,  256.  Amer- 
ican Hide  &  Leather  Dressing  &  Splitting  Machine  Co.  vs.  American  Tool  &  Machine  Co.,  4 
Fisher's  Pat.  Cases,  284. 

4  Russell  &•  Emvin  Mfg.  Co.  vs.  Mallory,  2  Official  Gazette,  4QJ' 


Manual  of  Patent  Law.  79 


CHAPTER    X. 

CAN  A  PRINCIPLE  BE  PATENTED? 

THIS  is  a  question  not  infrequently  asked.  In  com- 
mencing the  discussion  of  this  question,  the  most 
distinguished  of  American  writers  upon  patent  law1  speaks 
of  it  as  "  that  very  difficult  question."  He  makes  it  un- 
usually difficult,  because  he  attempts  to  answer  the  question 
which  forms  the  title  of  this  chapter  in  the  affirmative, 
when  the  Supreme  Court  has,  twice  at  least,  answered  it  in 
the  negative,  and  this  in  one  instance  when  one  of  the 
most  important  of  all  inventions  of  all  ages  was  under 
consideration,  —  that  of  the  electric  telegraph. 

A  principle,  in  the  sense  of  the  patent  law,  is  an  element- 
ary physical  truth  or  law;  and  some  confusion  results  in 
discussing  the  question  whether  a  principle  is  patentable, 
unless  there  is  kept  in  mind  just  what  question  we  desire 
answered.  A  principle  is  certainly  patentable  in  one  sense, 
—  that  is,  when  a  man  has  invented  a  new  machine,  and 
properly  patented  it,  he  is  entitled  to  treat  as  infringements 
all  other  machines  operating  on  the  same  principle.  The 
customary  and  proper  way  of  ascertaining  whether  two 
machines  operate  on  the  same  principle  is,  to  inquire  if 
they  make  use  of  the  same  mechanical  parts  or  equivalents 
therefor,  to  accomplish  similar  effects;  and  by  equivalents 
are  meant  such  substitutes  for  other  mechanical  parts  as  are 
within  the  knowledge  of  a  person  skilled  in  the  matters  to 
which  the  invention  pertains,  for  producing  results  similar 

1     George  Ticknor  Curtis. 


8o  Manual   of   Patent   Law. 


to  the  results  produced  by  such  other  mechanical  parts. 
In  this  sense,  a  principle  is  patentable ;  but  the  question  at 
the  head  of  this  chapter  has  usually  quite  another  meaning. 
It  usually  means,  Can  all  ways  of  producing  a  certain 
result  be  covered  and  claimed  in  a  single  patent?  or,  Can 
all  ways  of  producing  a  certain  result,  by  means  of  a  certain 
agency,  be  covered  and  claimed  in  a  single  patent?  To 
the  question  as  put  in  this  shape,  a  negative  answer  is  given 
by  the  Supreme  Court,  our  highest  authority.  Let  us  look 
at  a  few  of  the  cases :  — 

A  patentee  claimed,  as  an  improvement  in  looms,  "  the 
"  connection  of  the  reed  with  the  yarn-beam,  and  the  com- 
"  munication  of  the  motion  from  the  one  to  the  other, 
"  which  may  be  done  as  above  specified.^  In  a  suit  brought 
on  this  patent,  the  defendants  contended  that  this  was  a 
claim  to  an  abstract  principle.  Judge  Story  held  that  it 
was  a  claim  to  the  specific  mechanism  shown  in  the  patent, 
and  said :  "  We  hold  this  opinion  the  more  readily,  because 
"  we  are  of  opinion  that,  if  it  be  construed  to  include  all 
"  other  modes  of  communication  of  motion  from  the  reed 
"  to  the  yarn-beam,  and  for  the  connection  of  the  one 
"to  the  other  generally,  it  is  utterly  void,  as  being  an 
"  attempt  to  maintain  a  patent  for  an  abstract  principle,  or 
"  for  all  possible  and  probable  modes  whatsoever  of  such 
"  communication.  .  .  A  man  might  just  as  well  claim 
"  a  title  to  all  possible  modes  of  communicating  motion 
"  from  a  steam-engine  to  a  steam-boat,  although  he  had 
"invented  but  one  mode;  or,  indeed,  of  communicating 
"  motion  from  any  one  thing  to  all  or  any  other  things, 
"  simply  because  he  had  invented  one  mode  of  communi- 
"  eating  motion  from  one  machine  to  another  in  a  particular 
"case."1 

1     Stone  vs.  Sprague,  I  Story,  271 :  June,  1840. 


Manual  of  Patent  Law.  8i 


In  a  later  case,  tried  by  the  same  judge  in  the  same  year, 
the  following  excerpt  from  the  decision  gives  both  the  law 
and  the  facts:  "  Now  what  is  the  language  in  which  the 
"  patentee  has  summed  up  his  claim  and  invention?  The 
"  specification  states:  '  It  is  claimed  as  new,  to  cut  ice  of 
"  a  uniform  size,  by  means  of  an  apparatus  worked  by  any 
"  other  power  than  human.  The  invention  of  this  art,  as 
"well  as  the  particular  method  of  the  application  of  the 
"principle,  are  claimed  by  the  subscriber'  (Wyeth).  It 
"  is  plain,  then,  that  here  the  patentee  claims  an  exclusive 
u  title  to  the  art  of  cutting  ice  by  means  of  any  power, 
"  other  than  human  power.  Such  a  claim  is  utterly  un- 
"  maintainable  in  point  of  law.  It  is  a  claim  for  an  art  or 
"  principle  in  the  abstract,  and  not  for  any  particular 
"  method  or  machinery  by  which  ice  is  to  be  cut.  No 
"  man  can  have  a  right  to  cut  ice  by  all  means  or  methods, 
"  or  by  all  or  any  sort  of  apparatus,  although  he  is  not  the 
"  inventor  of  any  or  all  of  such  means,  methods,  or  ap- 
"  paratus."1 

This  question  came,  in  some  sort,  before  the  Supreme 
Court,  in  an  action  upon  a  patent  for  an  alleged  invention 
of  a  machine  for  making  lead  pipe.  The  patentee  claimed 
as  his  invention,  "  the  combination  of  .  .  the  core  and 
"  bridge,  or  guide-piece,  with  the  cylinder,  the  piston,  the 
"  chamber,  and  the  die,  when  used  to  form  pipes  of  metal, 
"  under  heat  and  pressure,  in  the  manner  set  forth,  or  in  any 
' '  other  manner  substantially  the  same. ' '  The  Supreme  Court 
took  occasion  to  say  that  a  claim  for  all  ways  of  doing  a 
thing  is  not  sustainable,  and  that  no  one  could  maintain  an 
exclusive  right  to  a  new  power,  should  one  be  discovered, 
as  steam,  electricity,  or  any  other  power  of  nature.2      In 

1  Wyeth  vs.  Stotie,  I  Story,  285:  October,  1840. 

2  Le  Roy  vs.  Tatham,  14  Howard,  175:  '&52- 

II 


82  Manual  of  Patent  Law. 


this  case,  the  machinery  was  old,  and,  as  the  claim  was  on 
the  machinery,  the  patent  was  voided,  on  the  ground  of 
lack  of  novelty.  The  process  used  was,  however,  new  and 
very  useful,  and,  in  a  subsequent  proceeding,  this  patent 
again  came  before  the  Supreme  Court,  and  was  sustained 
as  a  process. 1 

In  1853,  the  early  patent  of  Morse,  for  his  electric  tele- 
graph, came  before  the  Supreme  Court.  One  claim  in  the 
patent  reads:  "I  do  not  propose  to  limit  myself  to  the 
"  specific  machinery,  or  parts  of  machinery,  described  in 
"the  foregoing  specification  and  claims;  the  essence  of 
"my  invention  being  the  use  of  the  motive  power  of  the 
"  electric  or  galvanic  current,  which  I  call  electro-magnet- 
"  ism,  however  developed,  for  marking  or  printing  intelli- 
"  gible  characters  or  signs  at  any  distances,  being  a  new 
"  application  of  that  power,  of  which  I  claim  to  be  the 
"  first  inventor  or  discoverer."2  It  is  hardly  possible  that 
a  case  could  arise  presenting  a  fairer  chance  or  greater 
inducements  than  this  one  for  the  indorsement  of  such  a 
claim.  The  court  fully  and  squarely  found  that  Morse  was 
the  first  inventor  of  the  art  of  conveying  intelligence 
through  an  electric  conductor,  as  to  all  the  world;  the 
court  fully  realized  the  vast  importance  of  the  invention; 
and  the  specification  and  claims  were  drawn  with  care  and 
skill:  these  were  arguments  which  would  appeal  to  any 
properly  constituted  mind  with  great  force.  Yet  the  court 
flatly  and  squarely  condemned  the  claim.  Said  the  learned 
Chief-Justice:  "It  is  impossible  to  misunderstand  the 
"  extent  of  this  claim.  He  claims  the  exclusive  right  to 
"  every  improvement  where  the  motive  power  is  the  electric 
"  or  galvanic  current,  and  the  result  is  the  marking  or 


1  LeRoyvs.  Tatham,  22  Howard,  132:  18J9. 

2  O'Rielly  vs.  Morse,  15  Howard,  120 :  1853. 


Manual  of  Patent  Law.  &$ 


M  printing  intelligible  characters,  signs,  or  letters,  at  a 
"  distance.  If  this  claim  is  maintained,  it  matters  not 
"  by  what  process  or  machinery  the  result  is  accomplished. 
"  For  aught  that  we  now  know,  some  future  inventor,  in 
"  the  onward  march  of  science,  may  discover  a  mode  of 
"  writing  or  printing  at  a  distance,  by  means  of  the  electric 
"  or  galvanic  current,  without  using  any  part  of  the  process 
"  or  combination  set  forth  in  the  plaintiff's  specification. 
"  His  invention  may  be  less  complicated,  less  liable  to  get 
"  out  of  order,  less  expensive  in  construction  and  in  its 
"operation;  but  yet,  if  it  is  covered  by  this  patent,  the 
"  inventor  could  not  use  it,  nor  the  public  have  the  benefit 
"  of  it,  without  the  permission  of  this  patentee.  Nor  is 
"this  all:  while  he  shuts  the  door  against  inventions  of 
"  other  persons,  the  patentee  would  be  able  to  avail  him- 
"  self  of  new  discoveries  in  the  properties  and  power  of 
"  electro-magnetism  which  scientific  men  might  bring  to 
"  light.  For  he  says  he  does  not  confine  his  claim  to  the 
"  machinery  or  parts  of  machinery,  which  he  specifies,  but 
"  claims  for  himself  a  monopoly  in  its  use,  however  devel- 
"  oped,  for  the  purpose  of  printing  at  a  distance.  New 
"  discoveries  in  physical  science  may  enable  him  to  com- 
"  bine  it  with  new  agents  and  new  elements,  and  by  that 
"  means  attain  the  object  in  a  manner  superior  to  the 
"  present  process  and  altogether  different  from  it. 
"  The  court  is  of  opinion  that  the  claim  is  too  broad,  and 
"  not  warranted  by  law." 

In  this  connection,  attention  is  called  to  the  rule  laid 
down  by  the  Supreme  Court,  as  to  the  breadth  to  be  given 
to  a  claim.  In  one  of  McCormick's  reaper  cases,  the  court 
said :  "  If  he  be  the  original  inventor  of  the  device  or  ma- 
"  chine  called  the  divider,  he  will  have  the  right  to  treat  as 
"  infringers  all  who  make  dividers  operating  on  the  same 


84  Manual  of  Patent  Law. 


"  principle,  and  performing  the  same  functions  by  analo- 
"  gous  means  or  equivalent  combinations,  even  though  the 
"  infringing  machine  may  be  an  improvement  of  the 
"  original,  and  patentable  as  such.  But  if  the  invention 
"  claimed  be  itself  but  an  improvement  on  a  known  ma- 
"  chine,  by  a  mere  change  of  form  or  combination  of 
f*  parts,  the  patentee  can  not  treat  another  as  an  infringer 
' '  who  has  improved  the  original  machine  by  use  of  a 
M  different  form  or  combination  performing  the  same  func- 
tions."1 

From  which  it  may  be  concluded, — 

First,  —  That  a  claim,  in  terms,  to  all  ways  of  effecting 
a  certain  result,  or  a  claim  to  all  ways  of  effecting  a  certain 
result  by  means  of  a  certain  agency,  is  void. 

Second,  —  That  when  one  makes  an  invention  in  a  new 
field,  or  an  invention  that  is  wholly  and  substantively  new 
and  not  a  mere  improvement  on  some  prior  thing,  the 
court  will  give  the  broadest  possible  scope  to  the  term 
"  equivalent,"  and  will  generally,  if  not  always,  construe 
as  an  infringement  any  other  thing  which  makes  use  of  the 
vital  and  essential  characteristics  of  the  invention,  even 
though  the  mechanical  parts  or  other  tangible  agencies  may 
appear  to  be  widely  different;  but,  when  an  invention 
is  only  an  improvement  on  some  prior  thing,  then  only 
plain,  palpable,  and  obvious  substitutes  will  be  held  to 
be  equivalents. 

Third,  —  That  where  an  invention  is  susceptible  of  being 
claimed  as  a  process,  that  is  generally,  if  not  always,  the 
strongest  and  most  comprehensive  form  of  claim,  as,  by  its 
nature,  it  approaches  nearest  to  a  claim  for  an  abstract  prin- 
ciple; and  claims  for  processes  can  generally  be  so  drawn 
as  to  practically  and  legally  cover  abstract  principles. 

1    McCormick  vs.  Taicott,  20  Howard,  402. 


Manual  of  Patent  Law.  85 


CHAPTER    XI. 

THE   TITLE:    ASSIGNMENTS,    GRANTS,  LI- 
CENSES, AND  MORTGAGES. 

THE  statute  enacts,  "  That  every  patent,  or  any  inter- 
"  est  therein,  shall  be  assignable,  in  law,  by  an 
"  instrument  in  writing;  and  the  patentee,  or  his  assigns  or 
"  legal  representatives,  may,  in  like  manner,  grant  and 
"  convey  an  exclusive  right,  under  his  patent,  to  the  whole 
"or  any  specified  part  of  the  United  States;  and  said 
"  assignment,  grant,  or  conveyance  shall  be  void  as  against 
"  any  subsequent  purchaser  or  mortgagee  for  a  valuable 
"  consideration,  without  notice,  unless  it  is  recorded  in  the 
"  Patent  Office  within  three  months  from  the  date  thereof." l 
'There  are  three  instruments,  conveying  interests  in  pat- 
ents, specified  in  the  above-quoted  section,  —  assignments, 
grants,  and  mortgages;  there  is  a  fourth  instrument,  con- 
veying an  interest  in  a  patent,  not  specified  in  the  statute, 
but  born  of  the  common  law,  —  a  license.  This  chapter 
will  be  devoted  to  the  discussion  and  explanation  of  these 
instruments  and  the  interests  acquired  by  them. 

An  Assignment  is  an  instrument,  in  writing,  convey- 
ing either  the  whole  interest  in  a  patent  or  an  undivided 
part  thereof.  It  must  convey  to  the  assignee  all  the  rights, 
as  to  the  portion  of  the  patent  assigned,  which  was  before 
vested  in  the  original  patentee.  These  rights  are,  the  right 
to  make,  the  right  to  use,  the  right  to  vend  to  others  to  use, 

1     Section  36,  .let  0/  July  8,  1870. 


86  Manual  of   Patent  Law. 


and  the  right  to  convey  any  and  all  of  the  first  three  rights 
mentioned,  by  assignment,  grant,  and  license,  to  other 
parties.  Any  instrument  which  does  not  convey  all  these 
rights,  and  put  the  assignee  into  the  shoes  of  the  patentee 
in  all  these  particulars,  as  to  the  portion  of  patent  con- 
veyed, is  a  mere  license.  An  assignor  must  place  an 
"  assignee  upon  equal  footing  with  himself  for  the  part 
"  assigned.  The  assignment  must  undoubtedly  convey 
"  .  .  the  entire  and  unqualified  monopoly  which  the 
"  patentee  held  in  the  territory  specified,  excluding  the 
"  patentee  himself  as  well  as  others.  An  assignment  short 
"  of  this  is  a  mere  license."1  From  this,  it  follows  that 
if  a  patentee  convey  to  another  the  exclusive  right  to  make, 
vend,  and  use  under  a  patent,  and  yet  does  not  give  such 
other  person  the  right  to  convey  any  and  all  of  these  rights 
to  others,  freely  and  unqualifiedly,  then  the  conveyance  is 
a  mere  license. 

A  Grant  is  an  instrument,  in  writing,  conveying  the 
whole  monopoly  and  rights,  as  to  a  patent,  originally 
vested  in  the  patentee,  throughout  a  specified  portion  of 
the  United  States.  A  grant  is  a  territorial  assignment, 
and  a  grant  must  convey  the  same  rights  as  an  assignment, 
as  to  the  territory  specified;  otherwise  the  conveyance  is 
only  a  license.  Assignments  and  grants  are  generally 
spoken  of  indiscriminately  as  assignments;  but  the  law 
recognizes  a  technical  difference.  "  The  terms  assignee 
"  and  grantee  are  not  used  in  the  patent  law  as  synonym- 
"  ous  terms,  though  courts,  without  having  their  attention 
"  particularly  called  to  the  subject,  have  sometimes  used 
■"  them  indiscriminately  and  in  their  popular  sense."2     The 

1  Gayler  vs.  JVilder,  10  Howard,  4J7. 

2  Potter  vs.  Holland,  1  Fisher's  Pat.  Cases,  327. 


Manual  of  Patent  Law.  87 


distinction  between  an  assignee  and  a  grantee  is  this:  '■  An 
"  assignee  is  one  who  has  transferred  to  him,  in  writing, 
"  the  whole  interest  of  the  original  patent,  or  an  undivided 
"  part  of  such  whole  interest,  in  every  portion  of  the  United 
"  States.  And  no  one,  unless  he  has  such  an  interest  trans- 
"  ferred  to  him,  is  an  assignee.  A  grantee  is  one  who  has 
"  transferred  to  him,  in  writing,  the  exclusive  right,  under 
"  the  patent,  to  make  and  use,  and  to  grant  to  others 
"  to  make  and  use,  the  thing  patented,  within  and  through - 
"  out  some  specified  part  or  portion  of  the  United  States."1 
No  particular  form  of  words  is  necessary  to  constitute 
either  an  assignment  or  a  grant;  if  the  meaning  is  clear, 
that  the  maker  intended  to  convey  either  of  the  interests 
which  have  been  defined  as  constituting  an  assignment  or  a 
grant,  the  courts  will  construe  the  writing  accordingly. 
Although  the  law  specifies  an  instrument  in  writing,  an 
instrument  which  is  partly  written  and  partly  printed,  or 
wholly  printed  with  a  written  signature,  will  suffice.  An 
assignment,  grant,  or  license  does  not  need  sealing,  wit- 
nessing, or  acknowledging,  to  make  it  valid ;  but  witnesses 
to  such  a  paper  are  always  advisable.  A  party  must  be  the 
sole  owner  of  the  whole  patent,  or  a  grantee  under  the 
patent,  to  be  able  to  bring  a  suit  in  his  own  name  for 
infringement.  A  mere  licensee  can  not  bring  such  suit. 
A  grantee  can  only  bring  such  suit  for  infringement  in  the 
district  owned  by  him. 

Assignment  by  Insolvent.  Almost  or  quite  all  the 
States  have  insolvent  laws;  and,  as  persons  owning  patents 
sometimes  come  under  the  operation  of  such  laws,  it  be- 
comes important  to  know  whether  an  assignment  of  the 
patent  of  an  insolvent  person,  signed  by  his  assignee  or 

1    Potter  vs.  Holland,  I  Fisher's  Pat.  Cases,  327. 


Manual  of   Patent  Law. 


trustee  or  by  the  court,  will  pass  the  legal  title.  In  Massa- 
chusetts, the  insolvent  law  authorized  the  judge,  "  by  an 
"  instrument  under  his  hand,  to  assign  and  convey  to  the 
"  assignee  all  the  estate,  real  and  personal,  of  the  debtor;  " 
and  it  also  provided  that  such  "  assignment  shall  vest  in 
"  the  assignee  all  the  property,  real  and  personal,  which  he 
"  could  lawfully  have  sold,  assigned,  or  conveyed,  or  which 
"  might  have  been  taken  in  execution  upon  a  judgment 
"against  him."  Judge  Shepley  held  that  an  assignment 
of  an  insolvent  debtor's  patent  by  the  assignee  in  insol- 
vency, under  such  law,  does  not  pass  the  legal  title  to  the 
patent,  but  that  the  debtor  must  be  made  by  the  court 
to  make  an  assignment  in  person.1  There  would  seem  to 
be  no  good  reason  why  the  same  course  would  not  be 
necessary  with  a  bankrupt  patent-owner  under  a  general 
United  States  bankrupt  law,  unless  the  law  itself  specific- 
ally provided  otherwise. 

An  assignment,  and  probably  a  grant,  can  be  made  as 
well  before  the  issue  of  the  patent  as  after,  and,  if  the  con- 
veyance contains  a  request  to  that  effect,  the  patent  will 
issue  in  the  name  of  the  assignee.  A  contract  to  assign 
future  inventions  in  a  given  field  is  a  contract  that  the 
courts  will  enforce.2 

When  an  assignment  or  grant  of  a  patent  has  been  made, 
it  extends  to  the  end  of  the  original  term  of  the  patent,  and 
includes  all  reissues  of  the  patent  during  that  term. 3  But 
an  assignment  of  a  patent  will  not  include  a  right  to  an 
extension  of  the  same  beyond  the  original  term,  without 
the  presence  of  the  clearest  wording  to  that  effect.4  To 
assign  the  patent  for  the  "  term  for  which  the  said  letters- 

1  Ashcroft  vs.  Walworth,  J  Fisher's  Pat.  Cases,  528. 

2  .Xesmith  vs.  Calvert,  1  li'ood.  &-  Min.,  41. 

3  Wyeth  vs.  Stone,  I  Story,  2jj.    Brooks  vs.  Bicknell,  4  McLean,  64. 
•i  Brooks  vs.  Bicknell,  4  McLean,  64. 


Manual  of   Patent  Law.  89 


patent  are  or  may  be  granted,"  is  sufficient. !  A  patent 
can  not  be  attached  or  sold  on  execution  for  a  debt  of  the 
owner.2  A  patent  is  an  incorporeal  right,  existing  as  a 
whole  in  no  particular  state  or  district,  but  is  co-extensive 
with  the  United  States.  The  only  way  to  make  a  patent 
available  for  the  payment  of  a  debt  is,  to  proceed  against 
the  owner  under  a  state  insolvent  law  or  under  a  United 
States  bankrupt  law.  If  proceeded  against  as  an  insolvent, 
the  owner  of  the  patent  must  be  made,  by  the  court,  to 
execute  an  assignment  in  person,  and  the  same  course  must, 
on  principle,  be  pursued  when  the  proceedings  are  under 
the  general  bankrupt  law,  unless  the  law  itself  specifically 
provides  otherwise.  The  fact  that  a  machine  is  patented, 
does  not  prevent  its  being  levied  upon  and  sold  under  state 
laws;  but  such  a  levy  and  sale  only  passes  a  right  to  the 
materials  of  which  the  machine  is  composed :  it  gives  no 
right  to  work  the.  machine. 3 

Recording.  The  statute  directs  that  an  assignment  or 
grant  shall  be  recorded  within  three  months  from  its  date. 
This  clause  is  merely  directory.  An  assignment  or  grant  is 
good  and  valid,  as  against  the  assignor  or  grantor  and  all 
other  persons  whatever,  except  a  subsequent  bona-fide  pur- 
chaser or  mortgagee  for  a  valuable  consideration,  not 
having  notice  or  knowledge  of  the  prior  assignment  or 
grant,  even  if  never  recorded;  though  it  would  not, 
probably,  be  held  valid,  if  unrecorded,  against  a  creditor 
proceeding  against  the  assignor  or  grantor  by  means  of  the 
insolvent  or  bankrupt  laws.  If  a  patentee  were  to  assign 
his  patent  to  a  person  who  did  not,  within  three  months, 


1  Thayer  vs.  Hales,  5  Fisher's  Pat.  Cases,  ^48.     Xicholson  Pavement  Co.  -vs.  Jenkini 
5  Fisher's  Pat.  Cases,  4QI. 

2  Stephens  vs.  Gladding,  17  Henoard,  451. 

3  Savin  vs.  Guild,  1  Gall.,  487.    Stephens  VS,  Cady,  if  Howard,  530. 

12 


90  Manual   of   Patent  Law 


put  the  same  upon  the  Patent  Office  records,  and  then  the 
patentee  should  sell  the  patent  to  a  second  purchaser  who 
knew  nothing  of  the  prior  assignment,  and  the  second 
purchaser  should  have  his  assignment  properly  recorded,  he 
would  take  a  legal  title,  and  the  first  purchaser  would  have 
no  interest  in  the  patent;  but,  if  the  second  purchaser 
knew,  at  the  time  he  took  his  assignment,  of  the  prior 
assignment,  then  the  second  purchaser  would  get  no  title.1 

Undivided  Interests  in  Patents.  It  is  very  im- 
portant for  patentees  to  know  the  relations  that  exist  at  law 
between  joint  owners  of  patents.  Assignments  of  undi- 
vided interests  are  very  common,  but  their  effect  is  but 
little  understood.  Joint  owners  of  undivided  interests  in 
a  patent  are  not  partners,  in  any  sense,  merely  from  the 
fact  of  their  joint  ownership  of  the  patent.  Either  owner 
can  sell  the  whole  of  his  share  without  the  consent  of  the 
other,  or  he  can  work  the  patent  without  any  liability  to 
contribute  any  part  of  his  profits  to  another  owner;  and  it 
would  seem,  on  principle,  that  either  of  the  joint  owners 
can  grant  all  the  licenses  he  pleases  and  keep  all  the  money 
he  gets  therefor.  Neither  of  the  joint  owners  of  a  patent, 
nor  any  number  of  them  short  of  all  the  owners,  can  grant 
or  give  any  exclusive  right  of  any  kind. 

The  relative  rights  of  joint  owners  of  a  patent  are  those 
of  tenants  in  common :  one  joint  owner  has  as  good  right 
to  use  and  license  others  to  use  the  thing  patented  as  an- 
other joint  owner.  Neither  has  a  superior  right  over  the 
other,  and  one  such  owner  can  not  prevent  another  from 
using  the  patented  thing  or  licensing  others  to  use  it. 2 

1  Holden  vs.  Curtis,  2  N.H.,  63.  Brooks  vs.  Byam,  2  Story,  542.  Pitts  vs.  Whitman, 
2  Story,  6/J.  Boyd  vs.  Mc Alpine,  3  'McLean,  42Q.  Case  vs.  Redjield,  4  McLean,  J27.  Gibson 
vs.  Cook,  2  Blatchford,  148. 

2  Clitm  vs.  Brewer,  2  Curtis,  524. 


Manual  of  Patent  Law.  91 


In  commenting  on  this  question,  a  learned  judge  said: 
"  None  of  the  parties  interested  has  any  right  to  control 
"  the  action  of  the  other  parties  or  to  exercise  any  super- 
"  vision  over  them.  It  is  difficult  to  see  how  an  equitable 
"  right  of  contribution  can  exist  among  any  of  them, 
"  unless  it  includes  all  the  parties  interested  and  extends 
"  through  the  whole  term  of  the  patent-right.  And  if 
"  there  be  a  claim  for  contribution  of  profits,  there  should 
"  also  be  a  correlative  claim  for  losses,  and  an  obligation 
"upon  each  party  to  use  due  diligence  in  making  his 
"  interest  profitable.  It  is  not  and  can  not  be  contended 
"  that  these  parties  are  copartners;  but  the  idea  of  mutual 
"  contribution  for  profits  and  losses  would  require  even 
"more  than  copartnership."1 

Warranty.  If  an  assignment  or  grant  contains  no 
warranty  of  title,  or  as  to  the  validity  of  the  patent,  but 
only  a  simple  transfer  of  the  assignor's  or  grantor's  title, 
the  assignee  takes  the  interest,  pretended  to  be  conveyed, 
at  his  own  risk  as  to  the  title  of  the  assignor  or  grantor 
and  as  to  the  validity  of  the  patent.  The  paper  is  in  the 
nature  of  a  quit-claim ;  and,  if  the  title  fail,  or  the  patent 
prove  invalid,  the  assignee  or  grantee  can  not  recover  back 
any  money  paid  for  the  assignment  or  grant. 2 

Licenses.  A  license  is  a  conveyance  of  an  interest  in 
a  patent,  less  than  an  assignment  or  grant.  It  need  not, 
necessarily,  be  in  writing,3  though  otherwise  it  might  be 
very  hard  to  prove;  and  it  does  not  need  to  be  recorded.4 
It  is  not  a  creature  of  the  statute,  but  of  the  common  law. 

1  Vose  vs.  Singer,  4  Allen,  226:  Mass.,  1862. 

2  Jolliffe  vs.  Collins,  21  Missouri,  341.    McClure  vs.  Jeffrey,  8  Indiana,  83. 

3  Potter  vs.  I/ollitnd,  1  Fisher's  Pat.  Cases,  387. 

4  Chambers  vs.  Smith,  5  Fisher's  Pat.  Cases,  12. 


92  Manual  of  Patent  Law. 


A  license  is  usually  a  permit  to  make,  or  use,  or  sell  the 
thing  patented,  or  to  do  two  or  more  of  these  three  things; 
and  it  may  be  an  exclusive  right  to  do  all  these  things 
throughout  the  whole  United  States,  and  yet  not  amount  to 
an  assignment,  unless  it  convey  the  right  to  convey  all 
of  these  rights  to  others.  A  conveyance,  to  amount  to 
an  assignment  or  grant,  must  put  the  person  to  whom  a 
right  is  thereby  conveyed  into  the  very  standing  and  shoes 
of  the  patentee,  as  to  the  portion  of  the  patent  conveyed. 
Anything  that  conveys  a  less  right  is  a  license.  No  partic- 
ular form  of  words  is  necessary  to  constitute  a  license ;  the 
expressed  intent  of  the  maker  of  the  conveyance  will 
suffice,  no  matter  what  words  he  uses,  though  it  is  custom- 
ary and  proper  to  use  the  word  "license,"  in  distinction 
from  "assign"  or  "grant,"  as  the  operating  word  in 
a  license.  A  licensee  can  not  bring  a  suit  for  infringement 
in  his  own  name,  while  the  grantee  of  a  particular  district 
or  the  assignee  of  the  whole  patent  can. 

By  means  of  licenses,  a  patent-owner  may  erect  many 
distinct  and  separable  interests  under  a  patent.  He  may 
give  one  person  the  exclusive  right  to  make  the  patented 
article  in  a  certain  district  or  through  the  whole  United 
States;  he  may  give  to  another  the  exclusive  right  to  use, 
and  to  still  another  the  exclusive  right  to  sell;  or  he  may 
give  to  different  persons  a  common  right  to  make,  or  to 
use,  or  to  sell,  one  or  all,  in  a  certain  territory  or  through 
the  whole  United  States. 

A  license  to  a  party  which  does  not,  in  terms,  or  by 
equivalent  words,  showing  that  it  was  meant  to  be  assign- 
able, give  the  right  to  the  licensee  to  assign  the  same,  is  a 
mere  personal  privilege  and  not  transferable  by  the  act 
of  the  licensee.1     A  license  which  is  not  expressed  to  be 

1     Troy  Iron  &  Nail  Factory  vs.  Coming,  14  Howard,  2  lb. 


Manual  of   Patent  Law.  93 


for  the  whole  term  of  the  patent,  is  revocable  by  the  maker, 
and,  being  so  revoked,  the  right  of  the  licensee  comes 
to  an  end;  but  if  the  license  is  expressed  to  be  for  the 
whole  term  of  the  patent,  then  it  is  not  revocable,  and,  if 
a  shop-license  is  paid  for,  in  advance,  by  a  gross  sum  of 
money,  then  the  license  would  not  be  revocable,  unless 
expressly  stated  to  be. 

Licenses  may  be  granted  with  conditions  of  forfeiture 
attached,  such  as  the  payment  of  a  royalty  or  the  use  of 
due  diligence  in  carrying  on  business  under  the  patent; 
and,  if  such  condition  is  broken  by  the  licensee,  he  forfeits 
his  right  to  the  license,  and  he  may  be  proceeded  against 
like  any  other  infringer.1 

A  licensee  is  not  estopped,  by  his  action  in  taking  a 
license,  from  denying  the  validity  of  the  patent  or  setting 
up  any  defense  that  any  other  person  might  make. 2 

If  an  inventor,  before  procuring  a  patent,  allows  another 
person  to  make  the  article  afterward  patented,  or  acquiesce 
in  such  making  or  in  a  use  of  the  invention,  this  the  law 
construes  as  a  license,  from  the  inventor  to  such  other 
person,  to  use  the  patented  thing  after  the  grant  of  the 
patent.3 

Mortgage  of  Patents.  Although  the  statute  does 
not  expressly  state  that  patents  may  be  legally  mortgaged, 
it  is  clear,  from  the  reference,  in  the  section  quoted  at  the 
beginning  of  this  chapter,  to  "  a  mortgagee  for  a  valuable 
consideration,"  that  a  mortgage,  properly  made  and  re- 
corded at  the  Patent  Office,  would  be  held  valid  by  the 
courts.     As  no  specific  formula  is  necessary  to  constitute 

1  Woodwor th  vs.  Cook,  2  B latch  ford,  160.  Bell  vs.  McCultoit^h,  I  Fisher's  Pat.  Cases, 
380. 

1  Burr  vs.  Duryee,  2  Fisher's  Pat.  Cases,  275. 

3  McClurg  vs.  Kiugsland,  1  Howard,  208. 


94  Manual  of  Patent  Law 


an  assignment,  or  grant,  or  license,  the  same  is,  on  prin- 
ciple, true  as  to  a  mortgage,  and  any  instrument  clearly 
expressing  the  idea  that  the  maker  intended  to  give  a 
mortgage  on  his  patent,  would  probably  be  held  sufficient. 
It  is  probable  that,  if  any  form,  which  is  legal  and  proper 
under  the  practice  in  any  of  the  states,  were  followed,  that 
would  answer  the  requirements  of  the  law.  As  an  assign- 
ment does  not  need  to  be  sealed,  witnessed,  or  acknowl- 
edged, it  would  seem  that  a  mortgage,  which  conveys  a 
less  interest,  would  not  need  these  formalities;  yet,  in  the 
absence  of  any  statutory  directions  or  adjudications  upon 
this  point,  it  might  be  advisable,  and  certainly  not  harmful, 
to  follow  the  formalities  prescribed  for  mortgages  by  the 
laws  of  the  state  where  the  patent  mortgage  is  executed, 
and,  in  case  an  acknowledgment  is  taken,  to  have  it  taken 
by  the  clerk  of  a  court  of  record  having  a  seal.  The 
mortgage  would  need  to  be  recorded  at  the  Patent  Office. 


Manual  of  Patent  Law.  95 


CHAPTER    XII. 

JOINDER    OF  INVENTIONS,   AND    OF  IN- 
VENTORS, 

JOINDER  OF  INVENTIONS.  It  is  important  to  know 
how  many  and  what  different  inventions  may  be  pro- 
perly covered  and  claimed  in  a  single  patent. 

This  question  came  up  for  discussion  and  decision,  be- 
fore Judge  Story,  in  1840.  The  patent  under  discussion 
covered  two  distinct  machines,  —  one  for  marking  ice  into 
blocks  of  suitable  size  for  cutting,  and  the  other  a  machine 
for  cutting  the  ice.  The  point  was  made  by  the  defend- 
ants, that  two  machines  could  not  be  covered  and  claimed 
in  one  patent.  With  reference  to  this,  the  judge  said:  "  I 
"  agree  that,  under  the  general  patent  acts,  if  two  machines 
"  are  patented,  which  are  wholly  independent  of  each 
"  other,  and  distinct  inventions,  for  unconnected  objects, 
"  then  the  objection  will  lie  in  its  full  force,  and  be  fatal. 
"  The  same  rule  would  apply  to  a  patent  for  several  distinct 
"  improvements  upon  different  machines,  having  no  common 
"  object  or  connected  operation.  .  .  Construing,  then, 
"  the  present  to  be  a  patent  for  each  machine,  but  for  the 
"  same  common  purpose,  and  auxiliary  to  the  same  common 
"  end,  I  do  not  perceive  any  just  foundation  for  the  objec- 
"  tion  made  to  it."1 

In  the  case  of  Emerson  vs.  Hogg,  tried  in  1845,  tn^s 
question  came  up  again.  The  plaintiff  claimed,  in  his 
patent,  three  distinct  and  separable  machines  for  use  in 

1     Wyeth  vs.  Stone,  I  Story,  273. 


g6  Manual  of  Patent  Law. 


propelling  "  either  vessels  in  the  water  or  carriages  on  the 
land."  He  claimed  (i)  "  substituting  for  the  crank  in  the 
"reciprocating  engine  a  grooved  cylinder,  operating  in. 
"  the  manner  described,  by  means  of  its  connection  with 
"  the  piston-rod,"  (2)  a  certain  "  spiral  propelling  wheel," 
and  (3)  "  the  application  of  the  revolving  vertical  shaft  to 
"  the  turning  of  a  capstan  on  the  deck  of  a  vessel."  The 
machine  first  claimed  was  not  confined,  in  its  use,  to  a  boat 
or  sailing-vessel;  it  could  be  made  use  of  in  any  steam- 
engine.  It  was  objected,  that  these  distinct  inventions 
could  not  be  covered  in  the  same  patent.  The  judge  said, 
after  reviewing  former  cases,  on  this  point :  "  The  principle 
"seems  to  be,  that  the  inventions  should  be  capable  of 
"  being  used  in  connection,  and  to  subserve  a  common 
"  end,  though  their  actual  employment  together  does  not 
"  seem  to  be  required  to  sustain  the  validity  of  the  patent 
"  in  which  they  may  be  united.  Accordingly,  the  wrong- 
"  ful  use  of  either  separate  machine  is  a  violation  of  the 
"  patent-right  pro  tanto.  We  think  the  specification  in 
"  this  case  shows  that  these  three  separate  machines  were 
"  contrived  with  the  view  of  being  used  conjointly,  and  as 
"  conducing  to  a  common  end,  in  the  better  propelling 
"and  navigating  a  ship;  and,  in  our  opinion,  their  capa- 
"  bility  of  being  used  separately  and  independent  of  each 
"  other,  does  not  prevent  their  being  embraced  in  one 
"patent."1 

This  patent  came  before  the  Supreme  Court,  in  1859, 
and,  with  reference  to  the  objection  made,  "  that  one  set 
"  of  letters-patent  for  more  than  one  invention  is  not  tol- 
"  erated  in  law,"  the  court  said:  "  But  grant  that  such  is 
"  the  result  when  two  or  more  inventions  are  entirely 
"  separate  and   independent,   though  this  is  doubtful  on 

1     Emerson  vs.  Hogg,  2  Blatchford,  I. 


Manual  of   Patent  Law.  -  97 


"  principle,  yet  it  is  well  settled,  in  the  cases  formerly  cited, 
"  that  a  patent  for  more  than  one  invention  is  not  void,  if 
"  they  are  connected  in  their  design  and  operation.  This 
"  last  is  clearly  the  case  here.  They  all,  here,  relate  to 
"  the  propelling  of  carriages  and  vessels  by  steam,  and 
"  only  differ,  as  they  must  on  water,  from  what  they  are  on 
"  land;  a  paddle-wheel  being  necessary  in  the  former,  and 
"  not  in  the  latter,  and  one  being  used  in  the  former, 
"  which  is  likewise  claimed  to  be  an  improved  one.  All 
"  are  a  part  of  one  combination  when  used  in  the  water, 
"  and  differing  only  as  the  parts  must  when  used  to  propel 
"  in  a  different  element."1 

It  is  clear,  that  any  number  of  separable  inventions, 
capable  of  co-operating  toward  a  common  end,  as  well  as 
several  improvements  of  different  parts  of  a  machine, 
manufacture,  or  composition  of  matter,  are  claimable  in 
one  and  the  same  patent;  and  it  is  equally  clear,  on  prin- 
ciple, that  a  process,  a  machine,  and  a  product,  concurring 
to  a  common  result,  are  properly  claimable  in  the  same 
patent. 

The  Patent  Office,  however,  for  the  sake  of  convenience 
in  examining  inventions  by  classes,  at  the  time  of  this 
writing,  refuses  to  grant  such  patents.  It  requires  that  a 
separate  patent  shall  be  taken  for  each  distinct  machine, 
process,  manufacture,  or  composition  of  matter,  even  for 
distinct  improvements  upon  the  same  structure  or  machine. 
The  Office  refuses  to  permit  a  pulley  at  the  top  of  a 
window-curtain  and  a  cord-strainer  connected  to  the  pulley 
by  a  cord,  to  be  covered  in  the  same  patent.  It  would 
seem,  from  the  cases  quoted,  that  a  United  States  court 
would  hardly  sustain  the  action  of  the  Office. 

1    Ho^g  vs.  Emerson,  u  Howard,  J87. 
13 


98  Manual  of  Patent  Law. 


Joinder  of  Inventors.  Whenever  an  invention  is 
the  joint  product  of  different  minds,  a  joint  patent  must 
be  applied  for  by  all  the  inventors,  and  if  a  patent  for  such 
an  invention  is  taken  by  any  number  of  such  inventors  less 
than  the  whole  number,  such  patent  is  void.  The  inven- 
tion is  essentially  a  product  of  mind  and  not  of  the  hands, 
and  he  who  suggests  an  essential  feature  or  features  of  an 
art,  machine,  manufacture,  or  compound,  is  the  inventor 
thereof,  although  another  person  may  embody  such  sug- 
gestions in  tangible  materials. 

It  is  often  difficult  to  determine  whether  an  invention  is 
joint  or  single ;  but,  when  two  or  more  persons  are  engaged 
together  in  the  making  of  an  invention,  and  an  invention 
results  as  the  effect  of  their  joint  consultations,  such  inven- 
tion is  joint,  and  the  courts  will  not  go  into  all  the  minutiae 
of  the  case,  although,  and  of  course,  one  or  the  other  of 
the  persons  must  have  been  the  first  to  specify  this  or  that 
part,  or  the  whole  of  the  invention,  in  words,  or  by  draw- 
ings, or  by  a  model,  or  by  actual  reduction  to  practice. 
When,  however,  one  person  is  clearly  the  inventor  of  a 
distinct  part  of  a  device,  and  another  person  is  clearly  the 
inventor  of  another  distinct  part  of  such  device,  distinct 
patents  may  he  taken  by  each  for  his  part,  though  a  joint 
patent  would,  probably,  be  valid. 

When  a  patent  has  been  granted  for  an  invention  alleged 
to  be  joint,  no -evidence  short  of  that  which  is  conclusive 
and  indisputable,  will  be  held  to  prove  such  invention  to 
be  other  than  joint.1 

Scientific   and    Skilled   Aid   to    Inventors.     We 

may  as  well  inquire,  at  this  point,  to  what  extent  a  person, 
who  has  conceived  the  main  principle  or  characteristic  of 

1  Stearns  vs.  Barrett,  1  Mason,  IJ2.  Barett  vs.  Hall,  1  Mason,  472.  Thomas  vs.  H  'eeks, 
2  Paine,  103. 


Manual  of  Patent  Law.  99 


an  invention,  is  entitled  to  employ  the  services  of  scientific 
men  and  skilled  workmen  in  putting  his  ideas  into  practice, 
without  violating  his  right  to  a  patent  for  the  resultant 
product. 

Upon  this  point,  Chief-Justice  Taney,  speaking  for  the 
Supreme  Court,  said,  in  a  case  where  Morse's  telegraph 
patent  was  under  consideration :  "  Neither  can  the  inquiries 
"  he  made,  or  the  information  or  advice  he  received  from 
"  men  of  science,  in  the  course  of  his  researches,  impair 
"  his  right  to  the  character  of  an  inventor.  No  invention 
."  can  possibly  be  made,  consisting  of  a  combination  of 
"  different  elements  of  power,  without  a  thorough  knowl- 
"  edge  of  the  properties  of  each  of  them,  and  of  the  mode 
"  in  which  they  operate  on  each  other;  and  it  can  make  no 
"  difference  in  this  respect,  whether  he  derives  his  informa- 
"  tion  from  books  or  from  conversation  with  men  skilled  in 
"  the  science.  If  it  were  otherwise,  no  patent  in  which  a 
"  combination  of  different  elements  is  used,  could  be  ob- 
"  tained;  for  no  man  ever  made  such  an  invention  without 
"  having  first  obtained  this  information,  unless  it  was  dis- 
"  covered  by  some  fortunate  accident.  And  it  is  evident, 
"  that  such  an  invention  as  the  electro-magnetic  telegraph 
< 'could  never  have  been  brought  into  action  without  it; 
"for  a  very  high  degree  of  scientific  knowledge  and  the 
"  nicest  skill  in  the  mechanic  arts  are  combined  in  it,  and 
"  were  both  necessary  to  bring  it  into  successful  operation. 
"  And  the  fact  that  Morse  sought  and  obtained  the  neces- 
"  sary  information  and  counsel  from  the  best  sources,  and 
"  acted  upon  it,  neither  impairs  his  rights  as  an  inventor, 
"  nor  detracts  from  his  merits."1 

The  following  excerpt  from  the  decision  of  Judge  Betts, 
in  another  case,  gives  the  facts  and  the  law  applied  to  them : 

1    O'Reilly  vs.  Morse,  is  Howard,  62.  /.  ///. 


ioo  Manual  of  Patent  Law. 


"It  is  contended  that  Berry  was  the  inventor,  and  not  the 
"  plaintiffs;  which  position,  if  established,  would  be  a  good 
"  ground  to  dissolve  the  injunction.  The  defendants  lay 
"  before  the  court  the  declarations  of  Berry,  in  connection 
"with  his  working  without  any  draft,  design,  or  model 
"  before  him,  which,  the  defendants  insist,  proves  him  to 
"  be  the  inventor.  But,  on  the  other  hand,  Mr.  Kelsey 
"  details  very  minutely  the  suggestions  he  made,  his  super- 
"  intendence,  his  suggesting  alterations  in  a  design  got  up, 
"  his  disapproving  that,  and  the  adoption  of  his  views  in 
"  the  design  now  patented.  And  Mr.  Berry  gives  his  own 
"  account  of  the  matter,  and  explains  the  declarations 
"  attributed  to  him,  as  referring  to  his  working  without 
"  a  copy  before  him,  and  to  the  design  being  an  original 
"  and  not  a  copy.  He  does  not  intimate  that  he  did  not 
"  receive  suggestions,  alterations,  and  directions  from  Mr. 
"  Kelsey,  which  were  carried  out  in  this  design.  To  con- 
"  stitute  an  inventor,  it  is  not  necessary  he  should  have  the 
"  manual  skill  and  dexterity  to  make  the  drafts.  If  the 
"  ideas  are  furnished  by  him,  for  producing  the  result 
"  aimed  at,  he  is  entitled  to  avail  himself  of  the  median - 
"  ical  skill  of  others,  to  carry  out  practically  his  contriv- 
"  ance.  Here  the  devising  of  the  pattern,  in  this  sense, 
"  appears  to  have  been  by  the  plaintiffs."1 

From  these  and  other  cases,  it  appears  that,  when  a 
person  has  in  his  mind  the  main  features  of  an  invention, 
or  has  grasped  the  general  principles  upon  which  it  is 
to  operate,  he  is  entitled  to  the  aid,  counsels,  and  experi- 
ments of  scientific  men,  and  to  the  efforts  and  suggestions 
of  skilled  mechanics,  in  reducing  his  invention  to  prac- 
tice, and  in  embodying  it  in  tangible  materials,  without 
forfeiting  his  right  to  the  title  of  inventor.     In  one,  and 

1    Sparkman  vs.  Higginst  i  Blatcliford,  20s  ■'  1846. 


Manual  of   Patent   Law.  ioi 


that  a  leading  case,  it  was  held,  that,  to  invalidate  a  patent, 
suggestions  made  to  the  patentee  by  others  must  furnish  all 
the  information  necessary  to  construct  the  improvement, 
and  that,  if  such  suggestions  fall  short  of  suggesting  a 
complete  machine  or  other  invention,  they  are  only  sug- 
gestions and  not  invention.1 

Employer  and  Employee.  An  employer  is  not 
necessarily  entitled  to  an  invention  made  by  a  workman 
in  his  employ.  It  would  require  a  distinct  contract  or 
understanding  to  that  effect,  to  entitle  the  employer  to  the 
patent.  A  simple  contract  for  the  labor  of  a  man  at  any 
ordinary  trade,  profession,  or  occupation,  does  not  include 
a  right  to  the  inventions  made  by  the  employee,  whether 
relating  to  the  business  at  which  the  person  is  employed  or 
not;  but  if  a  man  is  employed  for  the  purpose,  wholly  or 
partially,  of  making  improvements  in  any  branch  of  trade 
or  manufacture,  then  his  inventions  would  belong  to  the 
employer.  Where,  in  the  absence  of  any  specific  under- 
standing or  contract,  a  man  makes  an  invention  in  the  time 
of  his  employer,  using  his  tools  and  materials  in  experi- 
ments and  construction,  this  would  furnish  strong  evidence 
that  the  improvement  was  intended  to  be  for  the  benefit 
of  the  employer.  In  any  case,  the  application  for  patent 
must  be  made  by  the  inventor,  and,  if  it  belongs  to  the 
employer,  assigned  to  him.  If  an  employee,  after  making 
an  invention  which  would  equitably  belong  to  the  employer, 
were  to  refuse  to  apply  for  a  patent  and  to  assign  the  same, 
the  employer's  remedy  would  lie  in  an  application  to  a 
court  of  equity,  to  compel  the  inventor  to  take  these  steps. 

1     Pitts  VS.  Hail,  2  Match  ford,  236  :  1&31.     Treadwell  -vs.  Parrott,  3  Fisher's  Pat.  Cases,  124. 


io2  Manual  of  Patent  Law. 


CHAPTER    XIII. 

CAVEATS. 

THE  statute  enacts,  "  That  any  citizen  of  the  United 
"  States,  who  shall  make  any  new  invention  or  dis- 
'  covery,  and  shall  desire  further  time  to  mature  the  same, 
1  may,  on  payment  of  the  duty  required  by  law,  file  in  the 
'  Patent  Office  a  caveat,  setting  forth  the  design  thereof, 
'  and  of  its  distinguishing  characteristics,  and  praying  pro- 
'  tection  of  his  right  until  he  shall  have  matured  his  inven- 
'  tion ;  and  such  caveat  shall  be  filed  in  the  confidential 
'  archives  of  the  Office  and  preserved  in  secrecy,  and  shall 
1  be  operative  for  the  term  of  one  year  from  the  filing 
?  thereof;  and,  if  application  shall  be  made  within  the 
1  year,  by  any  other  person,  for  a  patent  with  which  such 
'  caveat  would  in  any  manner  interfere,  the  Commissioner 
1  shall  deposit  the  description,  specification,  drawings,  and 
'  model  of  such  application  in  like  manner  in  the  confi- 
'  dential  archives  of  the  Office,  and  give  notice  thereof, 
'  by  mail,  to  the  person  filing  the  caveat,  who,  if  he  would 
'avail  himself  of  his  caveat,  shall  file  his  description, 
'  specifications,  drawings,  and  model  within  three  months 
'  from  the  time  of  placing  said  notice  in  the  post-office  in 
'  Washington,  with  the  usual  time  required  for  transmitting 
'  it  to  the  caveator  added  thereto,  which  time  shall  be 
'  indorsed  on  the  notice.  And  an  alien  shall  have  the 
'  privilege  herein  granted,  if  he  shall  have  resided  in  the 
'  United  States  one  year  next  preceding  the  filing  of  his 
'  caveat,  and  made  oath  of  his  intention  to  become  a 


Manual  of  Patent  Law.  103 


"  citizen."     The  statutory  governmental  fee  upon  the  filing 
of  a  caveat  is  ten  dollars. 

The  United  States  grants  patents  to  citizens  of  all  coun- 
tries upon  the  same  terms ;  but  caveats  can  only  be  filed  by 
citizens  and  aliens  who  have  resided  here  one  year  and 
taken  the  oath  of  intention  to  become  citizens. 

A  caveat  is  only  notice  of  an  inventor's  intention  to 
ultimately  apply  for  a  patent,  and  it  prevents  another 
inventor  from  getting  a  patent  unbeknown  to  the  caveat-' 
or  while  the  caveat  is  in  force.  It  is  the  practice  of 
the  Patent  Office  to  revive  a  caveat  from  year  to  year, 
so  long  as  the  government  fee  is  regularly  paid  for  each 
year,  and  the  Office  has  renewed  caveats  upon  the  payment 
of  the  fee  after  the  caveat  had  once  lapsed  or  expired.  So 
long  as  the  caveat  is  in  force,  no  one  but  the  inventor 
or  his  attorney  can  have  any  access  to  it,  or  get*  any 
information  from  the  Office  about  it;  but,  after  a  caveat 
has  lapsed,  any  one  is  entitled  to  see  it  or  have  a  copy  of  it, 
upon  paying  for  the  same.  A  caveat  does  not  prevent 
other  parties  than  the  inventor  from  making,  using,  and 
selling  the  invention.  Any  invention  can  always  be  freely 
made,  used,  and  sold  by  others  than  the  inventor,  without 
liability,  until  the  inventor's  patent  issues  from  the  Patent 
Office. 

Although  the  filing  of  a  caveat  is  a  very  strong  assertion 
of  an  intention  to  procure  a  patent  for  an  invention,  yet 
an  inventor  may  abandon  the  invention  afterward,  or  allow 
it  to  go  into  public  use  for  more  than  two  years  before 
application,  and  thereby  lose  his  right  to  a  patent. 

The  specification  or  description  for  a  caveat  does  not 
need  to  be  drawn  with  the  same  care  and  skill  as  the  speci- 
fication for  a  patent,  and  it  needs  to  have  no  "  claim." 

A  caveat  can  properly  cover  the  same  number  and  kind 


104  Manual  of  Patent  1  \ 

of  distinct  and  separable  inventions;  as  a  patent,  and  no 
more;  and  we  have  seen  that  a  patent  nv  *nd  in- 

clude as  many  distinct  and  separable  inventions  as  are 
capable  of  co-operating  toward  some  one  result  or  end. 
\  models  or  specimens  of  ingredients  need  to  be  filed 
with  a  caveat.  A  caveat  does,  however,  require  a  petition, 
specification,  or  description,  and  an  oath,  and,  when  the 
nature  of  the  invention  permits  it,  drawings  executed  in 
*the  same  manner  and  upon  paper  of  the  same  kind  and 
sue  as  lor  a  patent. 

A  caveat  may  be  legally  filed  on  a  complete  or  an  in- 
complete invention ;  the  filing  of  a  caveat  is  not  conch 

*ence  that  the  invention  which  forms  its  subject-matter 
is  incomplete.  The  invention  may  be  complete  or  incom- 
plete, and  in  either  case  it  is  equally  proper  subject-matter 
foraVaveat.1 

x   Jfmmmmm  Ami  rlMn     ''•••    Omm    ■<: 


Manual  of   Patent  Law.  105 


CHAPTER    XIV. 

APPLICATION  FOR  PATENT. 

THE  statute  enacts,  "  That,  before  any  inventor  or 
"  discoverer  shall  receive  a  patent  for  his  invention 
'  or  discovery,  he  shall  make  application  therefor,  in 
'  writing,  to  the  Commissioner,  and  shall  file  in  the  Patent 
'  Office  a  written  description  of  the  same,  and  of  the 
'  manner  and  process  of  making,  constructing,  compound- 
1  ing,  and  using  it,  in  such  full,  clear,  concise,  and  exact 
'  terms,  as  to  enable  any  person  skilled  in  the  art  or 
1  science  to  which  it  appertains,  or  with  which  it  is  most 
'  nearly  connected,  to  make,  construct,  compound,  and 
'use  the  same;  and,  in  case  of  a  machine,  he  shall  ex- 
'  plain  the  principle  thereof,  and  the  best  mode  in  which 
1  he  has  contemplated  applying  that  principle,  so  as  to  dis- 
1  tinguish  it  from  other  inventions  j  and  he  shall  particu- 
\  larly  point  out  and  distinctly  claim  the  part,  improvement, 
'  or  combination,  which  he  claims  as  his  invention  or  dis- 
1  covery;  and  said  specification  and  claim  shall  be  signed 
1  by  the  inventor  and  attested  by  two  witnesses."1 
"Sec.   27.     And  be  it  further  enacted,   That,  when  the 

*  nature  of  the  case  admits  of  drawings,  the  applicant 
1  shall  furnish  one  copy,  signed  by  the  inventor  or  his 
'  attorney  in  fact,  and  attested  by  two  witnesses,  which 

•  shall  be  filed  in  the  Patent  Office ;  and  a  copy  of  said 
'  drawings,  to  be  furnished  by  the  Patent  Office,  shall  be 
'  attached  to  the  patent  as  part  of  the  specification." 

1    Section  36,  Act  of  July  8, 1870. 
14 


io6  Manual  of  Patent  Law. 


"  Sec.  28.  And  be  it  further  enacted,  That,  when  the 
"  invention  or  discovery  is  of  a  composition  of  matter,  the 
"  applicant,  if  required  by  the  Commissioner,  shall  furnish 
"  specimens  of  ingredients  and  of  the  composition  sufficient 
"  in  quantity  for  the  purpose  of  experiment." 

"  Sec.  29.  And  be  it  further  enacted,  That,  in  all  cases 
"  which  admit  of  representation  by  model,  the  applicant, 
"  if  required  by  the  Commissioner,  shall  furnish  one  of 
"  convenient  size,  to  exhibit  advantageously  the  several 
"  parts  of  his  invention  or  discovery." 

"Sec.  30.  And  be  it  further  enacted,  That  the  appli- 
cant shall  make  oath  or  affirmation  that  he  does  verily 
"believe  himself  to  be  the  original  and  first  inventor 
"  or  discoverer  of  the  art,  machine,  manufacture,  compo- 
"  sition,  or  improvement,  for  which  he  solicits  a  patent, 
"  that  he  does  not  know  and  does  not  believe  that  the 
"same  was  ever  before  known  or  used;  and  shall  state 
"  of  what  country  he  is  a  citizen." 

The  Government  fee,  prescribed  by  law,  is  thirty-five 
dollars,  of  which  fifteen  is  to  be  paid  when  the  application 
is  filed,  and  twenty  more  when  the  patent  is  allowed  and 
the  applicant  desires  it  to  issue. 

The  "application  in  writing"  has  always  been  con- 
strued to  mean  a  petition. 

In  order  to  constitute  an  application  for  a  patent  which 
the  Commissioner  will  recognize  and  act  upon,  there  is 
required  a  petition,  a  specification,  an  oath,  drawings  and 
model  when  the  nature  of  the  invention  permits  it,  or,  if" 
the  invention  be  a  new  composition  of  matter,  specimens 
of  the  ingredients  and. of  the  compound,  and  a  fee  of 
fifteen  dollars. 

If  an  inventor  dies  before  the  patent  is  applied  for,  the 
same  can  be  applied  for  by  his  executor  or  administrator, 


Manual  o.f  Patent  Law.  107 


on  behalf  of  and  for  the  benefit  of  the  heirs  or  devisees  of 
the  deceased.1 

The  Petition.  No  particular  form  of  words  is  pre- 
scribed for  a  petition,  and  any  form  would  be  held  suffi- 
cient which  respectfully  and  clearly  sets  forth  the  desire 
of  the  petitioner  for  the  grant  to  him  of  a  patent.  The 
Patent  Office  has,  however,  issued  a  pamphlet  containing 
instructions  and  forms  for  petitions  and  other  papers,  which 
may  be  followed  with  great  propriety.  This  pamphlet  the 
Office  will  send,  without  charge,  to  all  intending  patentees 
who  request  the  Commissioner  so  to  do.  The  proper  forms 
will  be  found  in  this  pamphlet. 

The  Drawing.  Patent  Office  drawings  are  now  re- 
quired to  be  upon  paper  stiff  enough  to  stand  in  the  port- 
folios, the  surface  of  which  must  be  calendered  and  smooth ; 
"two-sheet"  Bristol  board,  or  Whatman's  hot-pressed 
drawing  paper,  "antiquarian"  size,  is  recommended. 
The  size  of  the  sheet  should  be  exactly  10X15  inches, 
with  a  marginal  line  just  one  inch  from  the  edge  all 
around.  Nothing  but  the  drawings  and  signature  are  per- 
mitted on  the*face  of  the  sheet,  and  these  must  all  be 
within  the  marginal  line.  One  of  the  ends  of  the  sheet  is 
taken  as  the  top,  and  a  space  of  one  and  one-fourth  inches 
downward  from  the  marginal  line  next  the  top  must  be  left 
blank  for  Patent  Office  purposes.  The  signatures  of  the 
inventor  and  witnesses  are  to  be  put  at  the  bottom  of  the 
sheet.  As  many  sheets  of  drawing  can  be  used  as  are 
necessary.  The  drawings  and  signatures  must  all  be  in 
perfectly  black  india-ink,  —  clear,  sharp,  solid,  and  not 
crowded.     It  is  useless  for  any  but  a  competent  draughts- 

1    Section  34,  Act  of  1870. 


io8  Manual  of  Patent  Law. 


man  to  attempt  the  production  of  a  Patent  Office  drawing, 
and  he  will  need  the  instructions  given  by  the  Office  pam- 
phlet. Drawings  must  be  rolled,  and  not  folded,  for  trans- 
mission to  the  Patent  Office.  The  care  required  by  the 
Office  is  necessary,  in  order  to  make  the  drawings  repro- 
ducible by  photo-lithography.  A  lithographic  copy  is 
inserted  in  the  patent  when  issued,  and  the  copies  in  the 
Patent  Office  reports  are  the  same. 

The  drawings  form  a  part  of  the  specification,  and  can 
be  referred  to,  to  explain  it.  The  drawing  should  be  re- 
ferred to  in  the  specification  by  letters  of  reference;  but, 
if  the  drawing  can  be  understood  without  them,  their 
omission  will  not  render  the  patent  invalid.1  The  drawing 
need  not  be  to  an  exact  scale. 

The  Oath.  The  inventor  is  required  to  make  oath, 
not  that  he  is  the  original  discoverer  or  inventor,  but  that 
he  believes  himself  to  be  such;  that  he  does  not  know 
or  believe  that  the  same  was  ever  before  known  or  used; 
and  he  must  state  of  what  country  he  is  a  citizen.  Joint 
inventors  must  make  oath  that  they  believe  themselves  to 
be  the  original,  first,  and  joint  inventors.  An  executor 
must  make  oath  that  he  believes  the  deceased  to  have  been 
the  original  and  first  inventor,  etc. 

The  statute  directing  the  taking  of  the  oath  is  held  to  be 
merely  directory,  so  that,  if  it  were  irregular  in  form,  or 
had  been  omitted  altogether,  the  patent  granted  upon  an 
application  wanting  the  oath  would  not  be  invalid.2 

The  Model  is  required,  by  the  Office  rules,  to  clearly 
exhibit  every  feature  which  forms  the  subject  of  a  claim  of 

1  Earle  vs.  Sawyer,  4  Mason,  Q.  Burrall  vs.  jfewett,  2  Paige,  143.  Brooks  vs.  Bickuell, 
3  McLean,  261.     Washburn  vs.  Gould,  3  Story,  133.     Emerson  vs.  Hogg,  2  Blatch/ord,  q. 

2  Uliittemore  vs.  Cutter,  1  Gall.,  432.  Dyer  vs.  Rich,  1  Metcalf,  igi.  Crompton  vs.  The 
Belknap  Mills,  3  Fisher' 's  Pat.  Cases,  J36. 


Manual  of   Patent  Law.  109 


invention,  but  should  not  include  other  matter,  unless  ne- 
cessary to  the  working  of  the  model.  It  must  be  neatly 
and  substantially  made,  of  durable  material,  and  not  more 
than  one  foot  in  length,  width,  or  height.  If  made  of 
soft  wood,  it  should  be  painted,  stained,  or  varnished. 
The  parts  should  not  be  glued  .together.  Models  are,  as 
a  rule,  retained  by  the  Office,  though,  if  a  case  has  stood 
rejected  for  more  than  two  years,  or  if  the  applicant  will 
formally  abandon  a  pending  case  at  any  time,  the  Office 
will  return  the  model  to  applicant,  upon  his  request  and  at 
his  expense. 

The  Specification  is,  by  far,  the  most  important 
thing  about  a  patent,  and  the  highest  care  and  skill  are 
often  requisite  in  its  preparation.  Specifications  may,  and 
often  do,  have  faults,  which  render  the  patents  of  which 
they  form  a  part  void  and  worthless.  If,  however,  the 
patentee  has  made  an  honest  effort  to  clearly  describe  his 
invention,  and  to  accurately  claim  it  and  nothing  more, 
a  court,  before  which  his  patent  may  come  for  consider- 
ation and  adjudication,  will  sustain  its  validity,  if  it  can  be 
reasonably  done. 

"  It  is  now  a  principle,  settled  by  the  concurrent  opinions 
"  of  some  of  the  most  enlightened  jurists  of  this  country, 
"  that  patents  securing  to  inventors  the  just  rewards  of  their 
"  labor  and  industry,  are  to  be  construed  liberally,  and 
"with  a  fair  purpose  of  carrying  out  the  object  of  the 
"  constitutional  provision  on  this  subject  and  the  legislation 
"  of  Congress  based  upon  it.  It  is  now  held,  that  these 
"exclusive  rights  are  not  to  be  viewed  in  the  light  of 
"  odious  monopolies,  but  as  the  result  of  a  policy  at  once 
"  beneficent  and  wise.  The  Constitution  of  the  United 
"  States  (art.  i.,  sec.  8)  has  conferred  on  Congress,  among 


no  Manual   of   Patent  Law. 


"  other  delegations  of  power,  the  right  to  pass  laws  '  to 
"  promote  the  progress  of  science  and  the  useful  arts,  by 
"  securing,  for  limited  times,  to  authors  and  inventors,  the 
"  exclusive  right  to  their  respective  writings  and  discov- 
"  eries.'  And  Congress,  in  the  exercise  of  the  power  thus 
"granted,  has,  from  time  to  time,  passed  laws  on  this 
"  subject,  designed  to  give  practical  effect  to  the  constitu- 
"  tional  provision.  At  this  day,  there  are  probably  few 
"  who  doubt  the  justness  and  the  wisdom  of  this  policy. 
"  That  it  has  been  followed  with  good  results,  in  stimu- 
"  lating  our  countrymen  to  intellectual  effort,  and  has 
"thereby  contributed  essentially  tto  our  rapid  national 
"  advance  in  '  science  and  the  useful  arts,'  is  too  clear  for 
"  controversy."1 

The  law,  however,  requires  that  a  specification  shall 
describe  the  invention  which  forms  its  subject-matter,  in 
such  "  full,  clear,  concise,  and  exact  terms,  as  to  enable 
"  any  person  skilled  in  the  art  or  science  to  which  it  apper- 
'.*  tains,  or  with  which  it  is  most  nearly  connected,  to  make, 
"construct,  compound,  and  use  the  same;  .  .  and  he 
"  shall  particularly  point  out  and  distinctly  claim  the  part, 
"  improvement,  or  combination  which  he  claims  as  his  in- 
"  vention  or  discovery;  "  and,  while  the  courts  are  bound 
construe  a  patent  liberally,  they  will  not  permit  a  patentee 
to  couch  his  specification  in  such  ambiguous  terms  that  it 
can  not  be  worked  by,  or  so  that  its  claim  may  be  expanded 
or  contracted  to  suit  different  exigencies. 2 

It  will  be  observed,  that  the  requirements  of  the  statute, 
in  this  respect,  are  twofold :  First,  That  the  invention  shall 
be  fairly  and  clearly  described ;  and,  Second,  That  it  shall 
be  accurately  claimed.     The  object  of  the  first  requirement 


1  Parker  vs.  Stiles,  J  McLean,  44  :  1849. 

2  Parker  vs.  Sears,  1  Fisher* s  Pat.  Cases,  Q3. 


Manual  of  Patent  Law.  hi 


is,  that  the  public  may  be  enabled  to  practice  the  invention 
when  the  patent  has  expired. * 

We  were  at  considerable  pains  to  point  out,  in  the  first 
chapter,  explaining  the  nature  of  a  patent  privilege,  that  a 
patent  is  in-  the  nature  of  a  bargain  between  the  inventor 
and  the  public,  and  that  the  public  requires,  as  a  consider- 
ation for  its  grant  of  an  exclusive  right  to  the  inventor, 
that  he  shall  fully  disclose  his  invention  to  the  public,  so 
that  the  public  may  freely  use  it  when  the  patentee's  exclu- 
sive right  is  at  an  end.  The  specification,  of  which  the 
drawing  is  a  part,  is  the  paper  wherein  the  patentee  under- 
takes to  make  his  disclosure;  and,  if  he  does  not  do  so 
fully  and  clearly,  he  does  not  give  the  consideration  which 
the  public  demands,  and  the  public,  acting  through  its 
courts,  declares  the  bargain  (that  is,  the  patent)  null  and 
void.  This  defect  is  known,  in  legal  phrase,  as  ambiguity 
in  the  description. 

The  object  of  the  requirement  that  the  patentee  shall 
accurately  claim  his  invention  is,  "  that,  while  the  patent 
"  is  in  force,  others  may  be  informed  of  the  precise  claim 
"  of  the  patentee,  and  may  not  ignorantly  infringe  his 
"  exclusive  right."2  The  defect  arising  from  not  accu- 
rately claiming  an  invention  is  known  as  ambiguity  in  the 
claim. 

The  question  as  to  whether  there  is  ambiguity  in  a  claim 
is  always  a  question  of  law,  and  for  the  judge  to  decide ; 
while  the  question  as  to  whether  there  is  ambiguity  in  a 
a  description  is  a  question  of  fact,  and  may  be  decided  by 
a  jury. 

Ambiguity  in  Description.  A  description  in  a  spe- 
cification is  ambiguous  when  a  person  skilled  in  the  art  or 

1    Parker  vs.  Stiles,  5  McLean,  j i.  2    Ibid. 


ii2  •  Manual  of  Patent  Law. 


science  to  which  the  invention  appertains,  or  with  which  it 
is  most  nearly  connected,  can  not,  when  working  by  the 
specification  and  drawings,  and  without  invention  or  ex- 
periment of  his  own,  put  the  invention  in  practice. * 

The  law  does  not  suppose  a  specification  to  be  addressed 
to  persons  of  the  very  highest  skill  in  the  art  or  business  to 
which  the  invention  relates,  but  to  persons  fairly  skilled  in 
such  art  or  business.  If,  for  instance,  the  invention  is 
a  machine  such  as  finds  its  proper  use  in  a  machinist's 
shop,  then  a  fairly  skilled  machinist  is  the  person  to  whom 
the  specification  is  supposed  to  be  addressed ;  and  if  such 
a  machinist  can  not,  from  the  specification  and  drawings, 
construct  the  machine,  without  invention  or  experiment  of 
his  own,  then  the  specification  is  ambiguous  and  uncertain. 
The  specification  might  be  thus  faulty,  and  yet  a  person  of 
unusual  mechanical  and  scientific  attainments,  as  a  thor- 
oughly educated  and  experienced  mechanical  engineer, 
might  be  able,  by  his  own  superior  skill  and  wide  range 
of  knowledge,  to  remedy  the  defects  of  the  specification, 
and  construct  from  it  the  machine  intended  to  be  patented, 
and  yet  the  specification  might  be  ambiguous. 

The  question  as  to  whether  a  specification  is  ambiguous 
is  generally  attempted  to  be  settled  in  patent  suits  by  means 
of  the  evidence  of  experts,  who  are  persons  of  more  than 
ordinary  skill  and  experience;  the  question,  when  put 
to  such  a  person,  is  solely  a  matter  of  opinion,  and  this  is 
probably  the  reason  why  the  evidence  of  experts  upon  the 
opposing  sides  of  a  case  is  so  often  contradictory  and  con- 
flicting upon  this  point.  The  expert  is  unable  to  place 
himself  just  in  the  position  of  the  ordinary  workman,  and 
hence  his  evidence  is  a  mere  matter  of  opinion. 


1    Brooks  vs.  Jenkins,  I  Fisher's  Pat.  Reports,  43.    Parker  vs.  Stiles,  1  Fisher's  Pat. 
Reports,  31Q.    Singer  vs.  IValmsley,  I  Fisher's  Pat.  Reports,  jj8. 


Manual  of   Patent  Law.  113 


If  there  are  drawings  attached  to  the  patent,  they  form 
a  part  of  the  specification,  and  if  the  invention  can  be  put 
in  practice  by  means  of  the  drawings  and  specification, 
that  is  sufficient. ! 

A  specification  is  not  ambiguous  simply  because  the  name 
or  title  given  to  the  invention  is  not  strictly  correct.  We 
are  to  look  into  the  whole  description  to  find  what  the 
invention  is,  and  the  title  given  to  it  signifies  but  little.2 
If,  however,  the  name  or  title  were  to  be  one  thing,  as  a 
sewing-machine,  and  the  real  invention  were  quite  another 
thing,  as  a  steam-engine,  that  would  probably  be  a  fatal 
repugnancy. 3 

If  it  is  necessary  to  describe  -the  whole  of  an  old  machine 
in  order  to  show  the  operation  of  some  new  part  or  im- 
provement which  forms  the  invention,  then  the  whole 
machine  should  be  described;4  but  a  patentee  is  not  re- 
quired to  describe  in  detail  things  which  are  old,  well- 
known,  and  within  the  knowledge  of  a  person  fairly  skilled 
in  the  art  to  which  the  invention  appertains.  It  is  not 
necessary  that  the  drawings  should  be  to  a  scale,  unless  the 
exact  relative  size  of  the  parts  is  absolutely  essential  to  the 
working  of  the  invention,  nor  need  the  exact  dimensions 
of  common  mechanical  elements,  such  as  wheels,  levers, 
racks,  and  pulleys,  be  given,  if  these  are  things  which  an 
ordinary  mechanic  can  readily  determine.5  The  elements 
of  form,  size,  and  number,  though  ordinarily  unimportant, 
become  important  when  form,  size,  and  number  are  of  the 
essence  of  the  invention.  An  invention  in  plow-plates 
furnishes  an  instance  where  form  may  become  important ; 

1  Singer  vs.  lValmsley,  i  Fisher's  Pat.  Cases,  Jj8.  Pitts  vs.  Wemple,  2  Fisher's  Pat. 
Cases,  10.    Hogg  vs.  Emerson,  I  Fisher's  Pat.  Reports,  5Q8. 

2  Sickles  vs.  Gloucester  Mfg.  Co.,  I  Fisher's  Pat.  Cases,  222. 

3  Goodyear  vs.  Neiv- Jersey  Central  Railway  Co.,  z  Fisher's  Pat.  Cases,  626. 

4  Wintermute  vs.  Redington,  1  Fisher's  Pat.  Cases,  230. 

5  Brooks  vs.  Jenkins,  1  Fisher's  Pat.  Reports,  42. 

!5 


ii4  Manual  of   Patent   Law. 


a  small  rotary  cutter  for  cutting  glass  furnishes  an  instance 
where  both  form  and  size  may  become  important ;  and 
some  varieties  of  grinding-mills  furnish  instances  where 
number  or  duplication  of  parts  may  become  essential. 

An  inventor  is  required  to  specify  and  describe  the  best 
mode  he  knows  of  putting  his  invention  in  practice  when 
several  modes  may  be  employed,  and,  if  he  describes  an  in- 
ferior mode  when  he  knows  and  himself  practices  a  better 
one,  that  creates  an  ambiguity  in  his  description. ! 

A  patentee  must  not  say  in  his  specification  that  a  whole 
class  of  substances,  as  acids,  will  answer  a  certain  purpose, 
when,  as  a  matter  of  fact,  only  some  ones  of  that  class  will 
answer;  and  he  must  not  make  use  of  terms  designed  to 
mislead  those  who  attempt  to  work  from  his  specification. 
The  patentee  must  make  a  disclosure  as  open,  full,  clear, 
and  honest  as  possible,  of  the  best  method  he  knows  of 
putting  his  invention  in  practice.  He  is  not  entitled  to 
the  protection  of  a  patent,  if  he  does  less  than  this. 

If  a  patentee  makes  a  mistake  in  a  trivial  matter,  and 
the  mistake  is  one  that  a  properly  skilled  person  would 
readily  see  and  overcome,  that  does  not  create  an  ambi- 
guity. If  an  invention  were  of  so  high  an  order  and  so 
intricate  in  its  construction  as  to  require  a  very  highly 
skilled  or  scientific  person  to  comprehend  it  and  put  it 
in  practice,  then  the  specification  must  be  taken  to  be 
addressed  to  such  persons  and  not  to  mere  mechanics 
of  any  grade.  Babbage's  calculating-machine  and  the 
House  and  the  Hughes  printing-telegraph  instruments  fur- 
nish instances  of  such  inventions;  and  it  is  always  a  thing 
of  importance  to  determine  to  what  class  of  persons  a 
specification  must  be  held  to  be  addressed.  Having  deter- 
mined   to  whom  a  specification   is   properly  held    to    be 

1    Page  vs.  Ferry,  I  Fisher's  Pat.  Cases,  2<)8. 


Manual  of   Patent  Law.  ii 


addressed,  the  question  then  is,  Can  such  a  person,  work- 
ing by  the  specification  and  drawings  if  any,  put  the 
invention  in  practice  without  invention  or  experiment  of 
his  own? 

It  must  always  be  remembered,  that  to  adjudge  a  specifi- 
cation ambiguous  creates  a  forfeiture  that  the  law  does  not 
favor,  and  it  must  be  quite  clear  that  a  specification  is 
ambiguous,  insufficient,  and  uncertain,  before  a  court  will 
thus  hold  it. 

Ambiguity  in  the  Claim.  This  is  a  very  different 
thing  from  ambiguity  in  the  description.  An  invention 
may  be  fully,  clearly,  and  perfectly  described,  so  that  a, 
properly  skilled  person  might,  from  the  description,  be 
able  to  put  the  invention  into  practice  without  any  inven- 
tion or  experiment  of  his  own,  and  yet  in  the  summary 
at  the  end,  technically  called  the  claim,  he  may,  by  inad- 
vertence or  design,  so  loosely  and  inaccurately  specify  what 
he  claims  to  be  his  invention,  that  there  can  not  be  gath- 
ered from  it  what  he  means  to  claim;  and,  in  this  case, 
there  is  an  ambiguity  in  the  claim.  A  patentee  is  required 
to  specify  clearly  and  exactly  in  what  his  invention  con- 
sists, that  the  public  may  be  informed  of  the  extent  of  his 
exclusive  right,  and  may  therefore  know  what  infringes  jthe 
patent  and  what  does  not. ' 

The  courts  have  laid  it  down,  in  numerous  cases,  that 
the  patentee  must  distinctly  point  out  what  is  old  or  well 
known  before,  and  then  distinguish  the  old  from  the  new; 
but  it  is  now  held  that  this  is  done  by  a  properly  worded 
claim,  even  if  the  patentee  do  not,  in  set  terms,  say  that 
such  and  such  things  are  old;    and  that  every  part  and 

1  Brooks  vs.  Jenkins,  I  Fisher's  Pat.  Reports,  43.  Jitdson  vs.  Moore,  I  Fisher's  Pat. 
Cases,  544. 


n6.  Manual  of   Patent  Law. 


thing  not  included  in  the  technical  claim  is,  by  the  act  of 
such  omission,  impliedly  admitted  to  be  old. *  This  is  the 
method  now  generally  followed  in  drawing  specifications, 
and  it  is  legal  and  sufficient  in  this  particular.  If  form, 
size,  number,  or  quality  are  material  and  of  the  essence  of 
invention,  then  it  will  not  be  sufficient  to  simply  mention, 
in  the  claim,  the  thing  having  one  of  these  attributes  with- 
out the  additional  mention  of  such  attribute;  as,  for  in- 
stance, if  it  is  material  that  a  certain  part  shall  be  made  of 
steel  of  a  certain  hardness  or  temper,  then  that  part  must 
be  mentioned,  in  its  place,  in  the  claim,  as  of  such  hard- 
ness or  temper:  for  if  the  part  were  mentioned  simply 
^s  of  steel,  then  the  patent  would  seem  to  cover  such  part 
made  of  steel  of  any  and  all  degrees  of  hardness ;  and  the 
public  would  not  be  informed  of  what  degree  of  hardness 
such  part  might  be  made  without  infringing  the  patent. 
A  claim  is,  however,  to  be  construed  in  connection  with 
the  description  in  the  specification ;  and  if  it  is  clear,  from 
the  claim  and  description,  taken  together,  what  the  patentee 
intends  to  assert  an  exclusive  right  to,  that  is  sufficient.2 

The  claim  is  ambiguous  when  there  can  not  be  gathered 
from  it,  in  connection  with  the  description,  what  it  is 
to  which  the  patentee  intends  to  assert  an  exclusive  right. 

Nature  of  the  Claim.  It  is  required  that,  some- 
where in  the  specification,  the  patentee  shall  state  and 
define  the  extent  and  nature  of  that  to  which  he  means 
to  assert  an  exclusive  right.  This  is  usually  done  in  a 
short  summary  at  the  end  of  the  specification,  and  this 
summary  is  technically  called  the  "  claim,"  in  distinction 
from  the  descriptive  part  of  the  specification.     The  claim 

1  IVinans  vs.  New-  York  &  Erie  Railway  Co.,  I  Fisher's  Pat.  Cases,  213. 

2  Hogg  vs.  Emerson,  1  Fisher's  Pat.  Reports,  Jq8.     Pitts  vs.  Wemple,  2  Fisher's  Pat. 


Manual  of   Patent  Law.  117 


is,  so  to  speak,  the  vital  part  or  soul  of  the  patent.1  It 
must  be  confined  to  the  patentee's  exact  invention,  and 
include  no  more. 

If  the  invention  is  a  machine  which  is  wholly  new,  a 
claim  to  the  machine  as  such  would  be  valid;  but,  if  the 
invention  be  a  new  combination  of  old  parts,  then  it  must 
be  claimed  as  such,  and  not  otherwise.  If  the  combination 
be  composed  of  elements  some  of  which  are  new  and  some 
of  which  are  old,  the  patentee  may  make  a  claim  to  each 
of  the  new  parts  specifically,  and  to  the  combination  of 
the  whole.2 

If  the  invention  is  only  an  improvement  on  some  prior 
thing,  then  it  should  be  so  claimed.  There  is  no  limita- 
tion to  the  number  of  different  clauses  of  claim  in  a  patent, 
and  the  patentee  may  make  as  many  clauses  of  claim  as  are 
necessary  to  fully  protect  and  cover  the  invention.  The 
rights  of  the  patentee  are  measured  by  his  claim;  and, 
though  he  may  have  invented  several  different  parts  or 
combinations,  another  person  does  not  infringe  the  patent 
who  makes  or  uses  or  sells  the  parts  or  combinations  which 
are  not  claimed,  —  so  that,  if  the  claim  is  not  as  broad  as 
the  invention,  the  patentee  has  to  bear  the  consequences.3 
Defects  of  this  kind  can  be  cured  by  a  re-issue,  a  subject 
hereinafter  treated. 

This  defect  is  one  that  affects  the  patentee,  and  does  not 
make  the  patent  void;  for  the  patent  may  be  perfectly 
valid  as  to  the  claims  it  has,  while  the  patentee  may  be 
entitled  to  make  much  broader  claims.  If,  however,  the 
patentee  claims  as  his  invention  more  than  he  is  legally 
entitled  to,  and  if  his  claim  is  broader  than  his  real  inven- 

1  Many  vs.  dagger,  I  Fisher's  Pat.  Reports,  222. 

2  Foss  vs.  Herbert,  2  Fisher's  Pat.  Cases,  ji. 

3  Rich  vs.  Close,  4  Fisher's  Pat.  Cases,  279.  k'uid  vs.  Speiuc.  ./  Fisher's  Pat.  Cases,  37. 
Meissner  vs.  Devoe  Mfg.  Co.,  j  Fisher's  Pat.  Cases,  283. 


n8  Manual  of   Patent   Law 


tion,  then  the  patent  is  void  as  to  such  claims  or  clauses  of 
claim,1  though  if  there  are  different  clauses  of  claim,  the 
patent  will  be  held  valid  as  to  those  clauses  which  are  not 
too  broad,  unless  the  defect  is  one  that  was  caused  willfully 
by  the  patentee,  and  with  the  express  design,  to  mislead 
and  deceive  the  public  as  to  the  extent  of  his  exclusive 
right.  Where  there  are  different  clauses  of  claim,  some 
of  which  are  too  broad,  the  defect  may  be  cured  by  filing 
a  disclaimer,  of  which  more  hereafter. 

Although  a  patentee  is  not  held  to  any  technical  forms 
in  making  his  claim,2  the  person  who  draws  the  claim 
should  determine,  in  his  mind,  before  drawing  the  claim, 
whether  the  invention  is  an  art,  —  that  is,  a  process,  —  a 
machine,  a  manufacture,  or  a  composition  of  matter,  and 
the  claim  should  be  drawn  to  correspond  with  the  inven- 
tion ;  for  if  he  clearly  claims  a  machine  when  the  real 
invention  is  a  process,  or  a  process  when  the  invention  is  a 
machine,  the  patent  will  be  invalid.  In  an  English  case, 
where  the  real  invention  was  a  process  for  preparing  flax  for 
spinning,  the  patentee  claimed  the  machine  he  made  use 
of,  which  was  old,  and  the  patent  was  declared  void.3 

A  claim  can  not  be  made  to  an  abstract  principle  or  for 
the  discovery  of  a  natural  property  of  a  substance;  but  it 
must  be  for  the  principle  as  applied,  or  for  a  mode  or 
manner  of  application.4  It  can  not  be  for  all  ways  of 
doing  a  thing,  or  for  a  result,  no  matter  how  produced. 

Courts  will  support  a  claim,  if  it  is  possible  to  do  so 
without  doing  violence  to  the  meaning  of  language,  but 
will  do  no  more.5 


1  Blake  vs.  Stafford,  3  Fisher's  Pat.  Cases,  2Q4. 

2  Ibid. 

3  Kay  vs.  Marshall,  2  Webster's  Pat.  Cases,  34-84. 
■i    Foote  vs.  Silsby,  1  Fisher's  Pat.  Reports,  268. 

5    Parker  vs.  Sears,  1  Fisher's  Pat.  Cases,  93.    Ransom  vs.   The  City  of  New-York,  I 
Fisher's  Pat.  Reports,  252.    Burden  vs.  Coming,  2  Fisher's  Pat.  Cases,  476. 


Manual  of  Patent   Law.  119 


Patent  Office  Procedure  upon  an  Application. 

The  petition,  specification,  and  oath  are  usually  connected 
together.  When  these,  with  the  fee,  drawings,  and  model, 
are  all  filed  in  the  Patent  Office,  free  of  expense  to  the 
Office,  and  not  before,  the  application  is  in  shape  for 
examination,  by  the  proper  examiner.  The  examiner  who 
is  put  in  charge  of  the  application,  then  makes  a  search 
through  the  American,  English,  and  French  Patent  Re- 
ports, through  the  files  of  the  rejected  cases  in  the  Patent 
Office,  and  through  the  books  of  reference  treating  upon 
subjects  to  which  the  invention  is  allied:  if  he  finds  no 
prior  device  which  anticipates  the  invention,  in  whole  or 
in  part,  the  patent  is  at  once  allowed.  If  the  invention 
should  happen  to  conflict  with  a  caveat  still  in  force, 
•the  application  is  filed  away  and  other  proceedings  had,  as 
explained  in  the  chapter  on  Caveats.  If  there  are  two  or 
more  clauses  of  claim,  the  examiner  may  find  that  some  of 
the  clauses  are  anticipated,  while  others  are  not;  in  such 
case  he  only  objects  to  those  he  finds  anticipated.  He  may 
find  that  the  inventor  is  entitled  to  a  claim  differently 
drawn  from  that  presented  in  the  application;  and,  in  such 
case,  he  either  rejects  the  case  and  leaves  it  to  the  judgment 
of  the  inventor  or  his  solicitor  how  the  claim  shall  be 
amended,  or  he  may  suggest  an  acceptable  form  of  claim. 

Practically,  there  are  a  number  of  exceptions  that  exam- 
iners are  accustomed  to  take.  If  the  exception  is  a  question 
of  law  or  of  practice,  in  distinction  from  one  of  novelty, 
it  is  appealable  directly  to  the  Commissioner  in  person. 

When  an  application  is  rejected,  in  whole  or  in  part, 
upon  the  ground  of  want  of  novelty,  the  examiner  cites  the 
references  upon  which  he  bases  his  rejection,  and  the  Office 
will,  upon  request,  furnish  to  the  applicant  a  copy  of 
all  such  references,  if  in  possession  of  the  Office,  which 


i2o  Manual  of   Patent  Law. 


is  usually  the  case,  on  payment  of  the  cost  of  making  "such 
copies.  If  the  applicant  finds,  on  looking  at  the  refer- 
ences, that  the  examiner  is  mistaken,  he  may  argue  the 
case  with  the  Office,  in  writing,  and  request  another  con- 
sideration, or  he  may  amend,  by  changing  his  description 
or  claim,  or  both  of  them,  in  such  a  way  as  to  avoid 
conflict  with  the  references.  The  applicant  has  the  right 
to  amend  and  argue  as  often  as  the  examiner  presents  a 
new  reference;  but  when  a  claim  or  clause  of  claim  has 
been  rejected  a  second  time  upon  the  same  references,  and 
without  any  substantial  change  being  made  in  such  rejected 
claim,  the  applicant  can  amend  or  argue  no  further  before 
the  examiner-in-charge,  unless  he  gets  the  permission  of  the 
Commissioner  to  that  effect. 

Appeals.  When  one  or  more  clauses  of  claim  have 
been  thus  twice  rejected  by  the  examiner-in-charge,  the 
applicant  may  then,  if  he  chooses,  take  an  appeal  to  the 
board  of  examiners-in-chief,  paying  a  Government  fee  of 
ten  dollars  thereon,  and  filing  written  reasons  of  appeal; 
and  a  personal  hearing  may  also  be  had,  if  requested. 

If  the  examiners-in-chief  still  reject,  another  appeal  can 
be  taken  to  the  Commissioner  in  person,  upon  payment  of 
a  Government  fee  of  twenty  dollars,  and  filing,  as  before, 
written  reasons  of  appeal,  and  here,  also,  a  personal  hearing 
can  be  had,  if  desired. 

If  the  Commissioner  rejects,  an  appeal  can  be  taken 
from  him  to  the  Supreme  Court  of  the  District  of  Colum- 
bia, upon  payment  of  a  docket  fee  of  ten  dollars,  furnishing 
the  court  copies  of  all  the  papers  in  the  case,  and  filing 
written  reasons  of  appeal.  It  is  expected  that  the  case 
will  be  argued  orally  before  the  court. 

If  this  court  does  not  allow  the  application,  a  still  further 


Manual  of  Patent  Law.  121 


proceeding  can  be  had,  in  the  nature  of  an  appeal,  by  a  bill 
in  equity  filed  in  a  United  States  Circuit  Court  having 
jurisdiction,  and  an  appeal  can  be  taken  from  this  court  to 
the  United  States  Supreme  Court. 

Upon  the  allowance  of  the  patent,  there  is  to  be  paid  a 
final  Government  fee  of  twenty  dollars,  when  the  patent 
will  be  issued  to  the  applicant,  containing  a  printed  copy 
of  the  specification  and  a  photo-lithographed  copy  of  the 
drawing. 

Skilled  counsel  is  very  important  in  the  preparation  and 
prosecution  of  an  application ;  but,  if  an  inventor  deems  it 
advisable  to  attempt  the  task  himself,  he  should  first  pro- 
cure the  Patent  Office  "  rules  of  practice  "  and  study  them 
till  he  thoroughly  understands  them. 


16 


122  Manual  of  Patent  Law. 


CHAPTER    XV. 
RE-ISSUES  AND  DISCLAIMERS. 

RE-ISSUE.  The  statute  enacts  (section  53,  Act  of 
July  8,  1870),  "  That  whenever  any  patent  is  inop- 
u  erative  or  invalid,  by  reason  of  a  defective  or  insufficient 
"  specification,  or  by  reason  of  the  patentee  claiming  as 
"  his  own  invention  or  discovery  more  than  he  had  a  right 
"  to  claim  as  new,  —  if  the  error  has  arisen  by  inadvert- 
"  ence,  accident,  or  mistake,  and  without  any  fraudulent 
"  or  deceptive  intention,  —  the  Commissioner  shall,  on  the 
"surrender  of  such  patent  and  the  payment  of  the  duty 
"  required  by  law,  cause  a  new  patent  for  the  same  inven- 
"  tion,  and  in  accordance  with  the  corrected  specifications, 
"  to  be  issued  to  the  patentee,  or,  in  the  case  of  his  death, 
"  or  assignment  of  the  whole  or  any  undivided  part  of  the 
' '  original  patent,  to  his  executors,  administrators,  or  assigns, 
"  for  the  unexpired  part  of  the  term  of  the  original  patent, 
"  the  surrender  of  which  shall  take  effect  upon  the  issue  of 
"  the. amended  patent;  and  the  Commissioner  may,  in  his 
"  discretion,  cause  several  patents  to  be  issued  for  distinct 
"and  separate  parts  of  the  thing  patented,  upon  demand 
"  of  the  applicant,  and  upon  payment  of  the  required  fee 
"for  a  re-issue  of  each  of  such  re-issued  letters-patent. 
"And  the  specification  and  claim  in  every  such  case  shall 
"  be  subject  to  revision  and  restriction  in  the  same  manner 
"  as  original  applications  are.  And  the  patent  so  re-issued, 
"  together  with  the  corrected  specification,  shall  have  the 
1 '  effect  and  operation  in  law,  on  the  trial  of  all  actions  for 


Manual  of  Patent  Law.  123 


"  causes  thereafter  arising,  as  though  the  same  had  been 
"originally  filed  in  such  corrected  form;  but  no  new 
"  matter  shall  be  introduced  into  the  specification,  nor, 
"  in  the  case  of  a  machine  patent,  shall  the  model  or 
"drawings  be  amended,  except  each  by  the  other;  but 
"when  there  is  neither  model  nor  drawing,  amendments 
"  may  be  made,  upon  proof  satisfactory  to  the  Commis- 
"  sioner,  that  such  new  matter  or  amendment  was  a  part  of 
"  the  original  invention,  and  was  omitted  from  the  specifica- 
"  tion  by  inadvertence,  accident,  or  mistake,  as  aforesaid." 

The  Government  fee  required  by  law  is  thirty  dollars, 
which  must  be  paid  with  the  application  for  the  re-issue. 
In  case  the  re-issued  patent  is  to  be  separated  into  different 
divisions,  the  fee  of  thirty  dollars  must  be  paid  for  each  of 
such  divisions. 

A  re-issue  is  for  the  purpose  of  correcting  any  uninten- 
tional mistake  in  either  the  specification  or  drawings  or 
both.  Ambiguity  in  the  description  or  claim,  as  well  as 
any  inaccuracy  in  the  extent  of  the  claim,  or  in  its  nature, 
—  as  if,  for  instance,  the  invention  is  claimed  as  a  machine 
when  it  is  really  a  process,  —  may  be  cured  by  a  re-issue. 
Wrong  dates  may  be  cured  by  a  re-issue. 

The  claim  in  the  re-issued  patent  may  be  either  broader 
or  narrower  than  the  claim  in  the  original  patent;  the 
patentee  may  omit  all  or  a  part  of  the  old  claim,  and  put 
in  a  wholly  or  partly  new  claim.1  The  re-issued  patent 
must,  however,  be  for  the  same  invention  as  the  original 
patent;2  and  a  patentee  can  not  include,  in  a  re-issue,  im- 
provements he  has  made  since  his  application  for  the 
original  patent.  Such  improvements  are  proper  subject- 
matter  for  a  new  and  original  patent. 

1  Hussey  vs.  McCormick,  i  Fisher's  Pat.  Cases,  jog. 

2  French  vs.  Rogers,  i  Fisher's  Pat.  Cases,  133.  Hoffheinsvs.  Brandt,  3  Fisher's  Pat. 
Cases,  2i8. 


124  Manual  of  Patent  Law. 


The  wording  of  the  description  and  claim  in  a  specifica- 
tion may  be  altered  at  will  in  a  re-issue,  subject  to  the 
the  qualification  that  the  re-issued  patent  be  for  the  same 
invention  as  the  original,  and  subject  to  the  further  qualifi- 
cation that  no  new  matter  be  interpolated.  New  matter  is 
that  which  is  not  contained  or  shown  in  either  the  original 
specification,  model,  or  drawings,1  and,  in  the  case  of  a 
machine  patent,  the  model  and  drawings  can  not  be 
amended  by  the  original  specification,  but  only  by  each 
other. 

The  rule  is,  that  the  patentee  is  entitled  to  describe, 
show,  and  claim  in  his  re-issued  description,  drawings, 
and  claim,  anything  that  he  might  have  legally  shown, 
described,  and  claimed  at  the  time  he  made  his  original 
application,2  such  rights  to  be  based  upon  the  model  and 
drawings  filed  with  his  original  application.  A  patent  may 
be  re-issued,  with  proper  intent,  any  number  of  times.3 
A  patent  may  be  re-issued  as  well  during  an  extended  term 
as  during  an  original  term.4 

According  to  the  provisions  of  the  Act  of  July  8,  1870, 
the  application  for  re-issue  can  only  be  made  by  the 
original  inventor,  if  living,  by  and  with  the  consent  of 
the  assignee  of  the  whole  patent,  if  the  patent  has  been 
assfgned ;  but,  by  a  later  act,  the  assignee  can,  without  the 
co-operation  of  the  inventor,  make  the  application,  when 
the  assignment  was  made  prior  to  July  8,  1870.  All  owners 
of  undivided  interests  in  a  patent  must  join  in  its  sur- 
render. 

It  is  not  in  the  power  of  a  patentee,  by  a  re-issue  of  his 
patent,  to  affect  the  rights  of  other  parties,  to  whom  an 

1  Chicago  F.  H.  Co.  vs.  Busch,  4  Fisher's  Pat.  Cases,  3Q5.  Buerk  vs.  Valentine,  5 
Fisher's  Pat.  Cases,  366. 

2  Smith  vs.  IVhisen,  3  Fisher's  Pat.  Cases,  343. 

3  Potter  vs.  Holland,  1  Fisher's  Pat.  Cases,  327. 

4  Gibson  vs.  Harris,  1  Blatchford,  167. 


Manual  of   Patent  Law.  125 


interest  in  the  whole  or  a  part  of  the  patent  has  previously 
passed,  without  their  consent;  but  such  consent  can  be 
given  before  or  after  the  re-issue.  A  person  to  whom  an 
interest  in  the  original  patent  has  passed,  as  a  licensee  or  a 
grantee,  is  entitled  to  the  same  rights  under  a  re-issue  that 
he  had  under  the  original;  but  he  may  choose  to  retain  his 
rights  under  the  old  patent,  and  the  law  gives  him  the  right 
so  to  do,  but  he  can  not  have  different  rights  under  both  the 
original  and  the  re-issue.1 

Although  a  patentee  may  not  re-issue  his  patent  for 
years,  yet,  when  he  does  so,  and  claims  in  the  re-issue 
things  not  claimed  in  the  original  patent,  but  which  were 
shown  in  the  original  drawings  or  model,  he  can  not  be 
held  to  have  forfeited  his  right  to  the  things  thus  newly 
claimed,  under  a  charge  of  public  use  or  abandonment.2 

A  patent  need  not  be  wholly  and  totally  void  in  order  to 
warrant  a  re-issue ;  for,  if  the  claim  in  a  patent  is  not  as 
broad  as  the  real  invention,  then  the  patent  is  inoperative 
and  invalid  pro  tanto,  and  warrants  a  re-issue  to  cure  the 
defect. 

The  action  of  the  Commissioner,  in  re-issuing  a  patent, 
is  evidence  that  the  original  and  the  re-issued  patents  are 
for  the  same  invention ;  but  if  the  two  patents  are  clearly, 
and  on  their  faces,  for  different  things,  that  destroys  the 
effect  of  such  evidence.3 

Patents  can  only  be  re-issued  to  cure  defects  which  hap- 
pened by  accident,  inadvertence,  or  mistake ;  and  if  defects 
were  introduced  designedly  into  the  original  patent,  with 
fraudulent  or  deceptive  intention,  that  destroys  the  right  to 
a  re- issue. 


1  Potter  vs.  Holland,  i  Fisher's  Pat.  Cases,  327. 

2  Moffit  vs.  Gaar,  2  Fisher's  Pat.  Cases,  610. 

3  Graham  vs.  Mason,  J  Fisher's  Pal.  Casts,  1, 


126  Manual  of  Patent  Law 


In  making  an  application  for  re- issue,  no  new  model  is 
requisite,  unless  the  model  is  to  be  amended  by  the  original 
drawings;  but  the  Patent  Office  requires  a  petition,  specifi- 
cation, oath,  and  new  drawings,  the  fee  of  thirty  dollars, 
and  a  certified  abstract  of  title,  which  the  Office  must  be 
paid  for  making ;  and  the  original  patent  must  be  surren- 
dered, and,  if  lost,  an  oath  must  be  made  to  the  fact  of 
such  loss,  and  a  certified  copy  furnished  in  its  stead.  The 
original  patent  thus  surrendered  is  not  returned,  if  a  re- 
issue is  made;  but,  if  the  desired  re-issue  is  refused,  the 
case  can  be  dropped,  and  then  the  old  patent  is  returned. 
The  applicant  for  re-issue  has  the  same  rights  before  the 
examiner-in-charge,  and  on  appeal,  as  in  an  original  appli- 
cation. 

A  re-issue  does  not,  in  any  manner,  extend  the  term  for 
which  the  patent  was  originally  granted,  for  the  patent 
is  only  re-issued  for  the  unexpired  part  of  the  original 
term.  If  an  invention  is  defectively  claimed,  so  that  the 
patentee  is  not  able  to  prevent  the  manufacture,  sale,  or 
use  of  the  patented  thing  by  others,  because  of  his  defect- 
ive claim,  he  may  cure  the  defect  by  re-issue,  and  then  the 
wrongful  makers,  or  vendors,  or  users,  will  be  infringers, 
and  the  manufacture,  sale,  and  use  by  them  can  be  pre- 
vented by  the  patentee ;  and  the  wrongful  acts  prior  to  the 
re-issue  do  not  give  the  wrong-doers  any  right  to  continue 
such  acts  after  the  re-issue.  One  important  consequence 
of  a  re-issue  is,  that  the  patentee  can  not,  after  re-issue, 
recover  any  damages  for  infringement  prior  to  re-issue; 
for  the  old  patent  must  be  surrendered  to  procure  a  re-issue, 
and  all  suits  and  causes  of  action  for  infringement  die  with 
the  surrender. 

Disclaimers.     The  statute  enacts  (section  54  of  the 


Manual  of   Patent  Law.  127 


Act  of  July  8,  1870),   "That  whenever,  through  inadvert- 
'  ence,  accident,  or  mistake,  and  without  any  fraudulent 

*  or  deceptive  intention,  a  patentee  has  claimed  more  than 
1  that  of  which  he  was  the  original  and  first  inventor 
'  or  discoverer,  his  patent  shall  be  valid  for  all  that 
'  part  which  is  truly  and  justly  his  own,  provided  the  same 
1  is  a  material  or  substantial  part  of  the  thing  patented ; 
'  and  any  such  patentee,  his  heirs  or  assigns,  whether  of 
'  the  whole  or  of  any  sectional  interest  therein,  may,  on 
1  payment  of  the  duty  required  by  law,  make  disclaimer 
1  of  such  parts  of  the  thing  patented,  as  he  shall  not 
'  choose  to  claim  or  to  hold  by  virtue  of  the  patent  or 
-  assignment,  stating  therein  the  extent  of  his  interest 
'  in  such  patent ;  said  disclaimer  shall  be  in  writing,  at- 
'  tested  by  one  or  more  witnesses,  and  recorded  in  the 

*  Patent  Office,  and  it  shall  thereafter  be  considered  as 
1  part  of  the  original  specification  to  the  extent  of  the 
1  interest  possessed  by  the  claimant  and  by  those  claiming 
'  under  him,  after  the  record  thereof.  But  no  such  dis- 
'  claimer  shall  affect  any  action  pending  at  the  time  of  its 
'  being  filed,  except  so  far  as  may  relate  to  the  question  of 
'  unreasonable  neglect  or  delay  in  filing  it." 

And  further,  on  the  same  subject,  in  section  60:  "  That 
'  whenever,  through  inadvertence,  accident,  or  mistake, 
'  and  without  any  willful  default  or  intent  to  defraud  or 
1  mislead  the  public,  a  patentee  shall  have  (in  his  specifica- 
1  tion)  claimed  to  be  the  original  and  first  inventor  or 
'  discoverer  of  any  material  or  substantial  part  of  the  thing 
'  patented,  of  which  he  was  not  the  original  and  first 
1  inventor  or  discoverer  as  aforesaid,  every  such  patentee, 
'  his  executors,  administrators,  and  assigns,  whether  of  the 
'  whole  or  any  sectional  interest  in  the  patent,  may  main- 
'  tain  a  suit  at  law  or  in  equity,  for  the  infringement  of 


i28  Manual   of   Patent  Law. 


"  any  part  thereof,  which  was  bona  fide  his  own,  provided 
"  it  shall  be  a  material  and  substantial  part  of  the  thing 
"  patented,  and  be  definitely  distinguishable  from  the 
"  parts  so  claimed,  without  right  as  aforesaid,  notwith- 
"  standing  the  specifications  may  embrace  more  than  that 
"  of  which  the  patentee  was  the  original  or  first  inventor  or 
"  discoverer.  But  in  every  such  case  in  which  a  judgment 
"  or  decree  shall  be  rendered  for  the  plaintiff,  no  costs 
"  shall  be  recovered,  unless  the  proper  disclaimer  has  been 
"  entered  at  the  Patent  Office  before  the  commencement 
"  of  the  suit;  nor  shall  he  be  entitled  to  the  benefits  of 
"  this  section,  if  he  shall  have  unreasonably  neglected  or 
"  delayed  to  enter  said  disclaimer." 

The  Government  fee,  on  filing  a  disclaimer,  is  ten  dol- 
lars. 

Who  May  Disclaim.  A  disclaimer  may  be  filed  by 
the  owner  or  owners  of  the  whole  patent,  or  the  grantee 
of  a  sectional  interest.  Licensees  can  not,  probably,  dis- 
claim, though  it  would  seem,  on  principle,  that  an  assignee 
of  an  undivided  part  of  the  patent  might.  A  disclaimer 
affects  the  rights  only  of  those  who  join  in  it,  though 
an  assignee  or  grantee  would  take  the  rights  and  position 
of  his  assignor  or  grantor.  *  The  disclaimer  must  state  the 
interest  in  the  patent  held  by  the  party  disclaiming.2 

Unreasonable  Delay  in  Filing.  If  a  party,  enti- 
tled to  file  a  disclaimer,  unreasonably  neglects  or  delays  to 
file  a  disclaimer,  when  the  same  is  necessary,  his  patent 
is  void,  so  far  as  his  interest  in  it  is  concerned;  and  it 
makes  no  difference,  in  considering  this  question,  whether 

1  Potter  vs.  Holland,  I  Fisher's  Pat.  Cases,  327. 

2  Brooks  vs.  Bicknell,  3  McLean,  43Q.    Silsby  vs.  Foote,  14  Howard,  221. 


Manual  of  Patent  Law.  129 


the  disclaimer  is  filed  before  or  during  the  pendency  of  a 
suit  brought  upon  the  patent.1  The  delay  commences 
when  knowledge  of  the  need  of  the  disclaimer  is  first 
brought  home  to  a  party  entitled  to  file  it,2  though  a 
patentee  could  hardly  be  expected  to  take  the  opinion  of 
any  one  other  than  that  of  a  judge  having  jurisdiction,  as 
satisfactory  evidence  of  the  invalidity  of  a  part  of  his 
patent,  although,  if  the  fault  were  a  very  glaring  one, 
it  might  be  held  otherwise.  The  Supreme  Court  has  said, 
that,  where  a  claim  has  received  the  sanction  of  the  Patent 
Office,  and  has  been  held  valid  by  a  circuit  court,  the 
patentee  has  the  right  to  insist  on  the  validity  of  the  claim 
till  the  Supreme  Court  has  passed  upon  it.3  In  another 
case,  the  Supreme  Court  held,  that,  where  a  patent  was 
obtained  in  1845,  and  there  were  numerous  suits  on  the 
patent  up  to  1854,  when  a  question  arose  as  to  whether 
a  clause  of  the  claim  in  the  patent  was  not  invalid  for  want 
of  novelty,  but  such  question  was  not  an  issue  in  the  case 
then  on  trial;  and  such  case  coming,  in  1856,  to  a  higher 
court,  the  clause  in  question  was  declared  void,  yet  there 
had  been  no  unreasonable  delay  in  filing  a  disclaimer.4 

The  Supreme  Court  held,  in  the  case  last  referred  to, 
that  the  question  of  unreasonable  delay  in  filing  a  dis- 
claimer, is  a  question  of  law,  and  this  decision  has  been 
followed  in  other  cases, 5  though  it  had  been  formerly  held 
that  such  question  is  a  mixed  question  of  law  and  fact,6 
and  in  another  case  it  has  been  held  to  be  a  question  of 


1  IVyeth  vs.  Stone,  i  Story,  295.    Reed  vs.  Cutter,  1  Story,  boo.    Brooks  vs.  Bicknell,  3 
McLean,  440. 

2  Singer  vs.  Waltnsley,  1  Fisher's  Pat.  Cases,  Jjtf.    Parker  vs.  Stiles,  1  Fisher's  Pat. 
Reports,  31Q. 

3  O'Rielly  vs.  Morse,  15  Howard,  J22. 

4  Seymour  vs.  McCortnick,  iq  Hoivard,  106. 

5  Singer  vs.  IValmsley,  1  Fisher's  Pat.  Cases,  Jj8.    Parker  vs.  Stiles,  /  Fisher's  Pat. 
Reports,  319. 

6  Brooks  vs.  Bicknell,  3  McLean,  4/Q. 


17 


130  Manual  of  Patent  Law. 


fact,1  which  it  would  seem  to  be,  though  the  opinion  of 
the  Supreme  Court  is  not  to  be  gainsayed.  If  a  party 
defendant  would  avail  himself  of  an  unreasonable  delay  to 
file  a  disclaimer,  he  must  set  up  the  charge  in  his  answer. 

Disclaimer  During  Suit.  Although  a  party  enti- 
tled to  file  a  disclaimer  may  not  have  unreasonably  delayed 
in  filing  the  same,  yet,  if  he  has  occasion  to  file  one  during 
the  pendency  of  a  suit  brought  by  him  on  the  patent, 
he  can  not  recover  the  costs  in  the  suit,  though  it  will  not 
affect  his  recovery  of  damages. 

"  When  a  patent  contains  several  claims,  and  the  inven- 
"  tion  covered  by  one  of  them  is  not  new,  or  is  absolutely 
"  void,  the  patentee  may  maintain  an  action  for  the  in- 
"  fringement  of  the  patent,  so  far  as  it  regards  the  valid 
"  claims,  although  he  did  not  make  or  record  a  disclaimer 
"  of  the  invalid  or  void  claim  before  the  commencement 
"of  the  action."2 

It  was  held,  in  one  case,  that  a  perpetual  injunction 
would  not  be  granted,  if  a  necessary  disclaimer  had  not 
been  filed  previous  to  the  commencement  of  the  suit;3  but 
it  has  since  been  held  differently,4  and  the  later  decision 
will  probably  be  followed  in  future. 

Nature  of  a  Disclaimer.  A  disclaimer  is,  when 
filed,  to  be  considered  as  a  part  of  the  specification,  in 
considering  the  rights  of  the  party  filing  it.  It  may  strike 
out  one  or  more  clauses  of  claim,  or  it  may  modify  all  or  a 
part  of  the  claim,  and,  when  there  is  but  a  single  clause  of 
claim,  it  may  modify  that. 

1  Burden  vs.  Coming,  2  Fisher's  Pat.  Cases,  477. 

2  Carhart  vs.  Austin,  2  Fisher's  Pat.  Cases,  549.  Hall  vs.  Niles,  2  Blatchford,  194. 
Vance  vs.  Campbell,  1  Black,  42Q. 

3  Wyeth  vs.  Stone,  1  Story,  295. 

4  Myers  vs.  Frame,  4  Fisher's  Pat.  Cases,  493. 


Manual  of  Patent  Law.  131 


The  claim  in  a  patent  was  for  "  the  use  and  application 
M  of  glue  or  glue-composition  in  the  tubing,  substantially 
' '  as  described,  for  the  purpose  of  making  the  flexible 
"  tubing  gas-tight,  whether  of  cloth,  or  rubber  or  other 
"  gums."  Pending  a  suit  for  infringement  of  this  patent, 
a  disclaimer  was  filed  to  that  part  of  the  claim  "  which 
"  claims  as  an  improvement  in  flexible  tubing  for  illumina- 
"  ting-gas,  the  use  and  application  of  glue,  thereby  limiting 
"  the  claim  to  the  use  and  application  of  glue-composition 
"  in  the  tubing."     Held  to  be  a  valid  disclaimer.1 

There  is  no  limitation  to  the  number  of  disclaimers 
which  may  be  filed. 

1  Taylor  vs.  Archer,  4  Fisher's  Pat.  Cases,  449.  See  Myers  vs.  Frame,  4  Fisher's  Pat. 
Cases,  493. 


132  Manual  of  Patent  Law. 


CHAPTER    XVI. 

INTERFERENCES. 

THE  statute  enacts,  "  That,  whenever  an  application 
"  is  made  for  a  patent  which,  in  the  opinion  of  the 
"  Commissioner,  would  interfere  with  any  pending  applica- 
"  tion  or  with  any  unexpired  patent,  he  shall  give  notice 
"  thereof  to  the  applicants,  or  applicant  and  patentee, 
"  as  the  case  may  be,  and  shall  direct  the  primary  examiner 
"  to  proceed  to  determine  the  question  of  priority  of  inven- 
"  tion.  And  the  Commissioner  may  issue  a  patent  to  the 
"  party  who  shall  be  adjudged  the  prior  inventor,  unless 
"  the  adverse  party  shall  appeal  from  the  decision  of  the 
"  primary  examiner,  or  of  the  board  of  the  examiners-in- 
"  chief,  as  the  case  may  be,  within  such  time,  not  less  than 
"  twenty  days,  as  the  Commissioner  shall  prescribe."1 

The  Commissioner  is  authorized,  by  statute,  to  establish 
rules  for  taking  affidavits  and  depositions  in  these  cases.2 
He  has  established  such  rules,  and  copies  can  be  had,  free 
of  charge,  upon  application  to  him  by  letter  or  in  person. 
Officers  having  authority  to  take  depositions,  as  justices  of 
the  peace,  notaries  public,  etc.,  are  proper  officers  before 
whom  to  take  interference  evidence.3 

If  witnesses  are  willing  to  appear  and  testify,  without 
subpoena,  they  can  do  so ;  but  they  can  be  forced  to  appear 
and  testify,  by  means  of  a  subpoena  and  process,  which  can 


1  Section  42,  Act  of  July  8,  1870. 

2  Section  43,  Act  of  July  8,  1870. 

3  Ibid. 


Manual  of   Patent  Law.  133 


be  procured  from  clerks  of  United  States  courts.1  Wit- 
nesses thus  subpoenaed,  and  in  attendance,  are  allowed  the 
same  fees  as  witnesses  in  the  United  States  courts;  but  a 
witness  can  not  be  compelled  to  attend  at  any  place  more 
than  forty  miles  from  the  place  where  he  is  served  with  the 
subpoena,  nor  can  he  be  compelled  to  attend,  unless  his 
fees  for  one  day's  attendance  and  his  traveling  expenses  to 
and  from  the  place  of  examination  are  tendered  to  him 
with  the  service  of  the  subpoena;  and  he  can  not  be  com- 
pelled to  answer  a  question  which  will  disclose  any  secret 
invention  or  discovery  made  or  owned  by  himself. 2 

The  Patent  Office  "  rules  of  practice  "  say:  "  An  '  in- 
"  terference  '  is  a  proceeding  instituted  for  the  purpose  of 
"  determining  the  question  of  priority  of  invention  between 
"  two  or  more  parties  claiming  the  same  patentable  subject- 
"  matter.  It  may  also  be  resorted  to  for  the  purpose  of 
"  procuring  evidence  relating  to  the  alleged  abandonment 
"  or  the  public  use  of  an  invention." 

"  Before  the  declaration  of  an  interference,  all  prelimi- 
"  nary  questions  must  be  settled  by  the  primary  examiner, 
"  and  the  issue  clearly  defined;  the  invention  which  is  to 
"  form  the  subject  of  the  controversy  must  be  decided  to 
"  be  patentable,  and  the  claims  of  the  respective  parties 
"  must  be  put  in  such  condition  that  they  will  not  require 
"  alteration  after  the  interference  has  been  finally  decided, 
"  unless  the  testimony  adduced  upon  the  trial  should  ne- 
"  cessitate  such  change." 

"  An  interference  will  be  declared  in  the  following  cases: 

."  1.  When  two  or  more  parties  have  applications  pend- 
"  ing  before  the  Office  at  the  same  time,  and  their  respective 
"  claims  conflict  in  whole  or  in  part.3     When  two  or  more 

1    Section  44,  Act  0/  July  8,  1870.     2    Section  45,  Act  of  July  8,  1870. 
I     (',.  S«  S.  O.  S.  Co.  vs.  V.  S.  D.  Co.,  3  Fisher's  Pat.  Cases,  48Q. 


134  Manual  of  Patent  Law. 


"  applications  are  pending  at  the  same  time,  in  each  of 
"  which  a  like  patentable  invention  is  shown  or  described, 
"  but  not  specifically  claimed  in  all  of  them. 

"  2.  When  an  applicant,  having  been  rejected  upon  an 
"  unexpired  patent,  claims  to  have  made  the  invention 
"before  the  patentee. 

"3.  When  an  applicant  for  a  re-issue  embraces  in  his 
"  amended  specification  any  new  or  additional  description 
"  of  his  invention,  or  enlarges  his  claim,  or  makes  a  new 
"  one,  and  thereby  includes  therein  anything  which  has 
"  been  claimed  or  shown  in  any  patent  granted  subsequent 
"  to  the  date  of  his  original  application,  provided  there  is 
"  reason  to  suppose  that  such  subsequent  applicant  or 
1 '  patentee  may  be  the  first  inventor. ' ' 

An  interference  is  usually  brought  about  by  a  request 
to  that  effect  by  an  applicant  for  an  original  or  re-issued 
patent,  when  the  desired  claim  is  refused  to  such  applicant 
upon  reference  to  some  prior  patent,  and  the  applicant  has 
reason  to  think  that  he  may  be  the  first  inventor  of  the 
device  in  question;  but  the  Patent  Office  often  takes  the 
responsibility  of  putting  into  interference  two  or  more 
applications,  pending  at  the  same  time,  which  show  or 
claim  the  same  patentable  subject-matter. 

The  first  step  taken  by  the  Office  looking  toward  the 
declaration  of  an  interference,  is  the  issue  of  a  require- 
ment to  each  of  the  parties  to  file  what  is  called  a  "  pre- 
liminary statement,"  before  a  day  fixed  by  the  Office, 
giving,  under  the  oath  of  the  party,  the  date  of  the  original 
conception  of  the  invention  in  controversy,  the  facts  and 
dates  of  subsequent  steps  toward  reduction  to  practice,  the 
date  of  reduction  to  practice,  and  the  extent  of  use  after 
reduction  to  practice.  This  "preliminary  statement" 
must  be  sworn  to,  sealed  up,  and  sent  to  the  Office,  where 


Manual  of  Patent  Law.  135 


it  is  kept  secret  till  the  day  set  for  the  filing  of  such  state- 
ments by  all  the  parties,  on  which  day  they  are  opened  to 
the  inspection  of  all  the  parties  concerned.  In  subsequent 
testimony,  a  party  is  not  permitted  to  go  back  of  the  dates 
given  in  his  preliminary  statement  or  to  contradict  its  alle- 
gations. 

The  burden  of  proof  is  upon  the  party  whose  applica- 
tion, showing  or  claiming  the  device  in  issue,  was  last  filed 
in  the  Office  j  and,  if  such  party  fails  to  file  a  preliminary 
statement,  or,  in  filing  it,  to  overcome  the  prima  facie 
made  by  the  date  of  filing  an  application  by  another  party, 
or  if  it  shows  that  he  has  abandoned  his  invention  or  that 
he  allowed  the  invention  to  be  in  public  use  or  on  sale  for 
more  than  two  years  prior  to  his  application,  the  case  will 
be  adjudged  against  him  at  this  point,  unless  the  public  use 
appears  to  affect  the  rights  of  the  other  party  or  parties,  in 
which  latter  case  the  interference  will  proceed.  If  the 
earlier  applicant  for  a  patent  fails  to  file  a  preliminary 
statement,  he  will  not  be  allowed,  subsequently,  to  prove 
the  invention  by  him  at  an  earlier  date  than  the  date  of 
filing  his  application. 

If  the  interference  proceeds  (as  it  almost  always  does) 
beyond  the  filing  of  preliminary  statements,  the  Office  sets 
a  time  during  which  the  latest  applicant  for  patent  must 
finish  the  taking  of  his  testimony-in-chief,  or  his  direct 
evidence,  and  the  other  parties  have  similar  times  set,  in 
the  reversed  order  of  the  dates  of  their  respective  applica- 
tions ;  and  after  this  a  time  is  set  for  rebutting  evidence. 

Postponement  or  extension  of  these  times  can  be  pro- 
cured upon  proper  cause  being  shown  by  affidavit,  a  copy 
of  which,  together  with  a  copy  of  the  notice  of  the  motion 
for  further  time,  must  be  served  upon  the  adverse  parties  or 
their  attorneys. 


136  Manual  of   Patent  Law. 


An  interference  properly  declared  will  not  be  dissolved 
without  judgment  of  priority  being  given  in  favor  of  one 
or  the  other  of  the  parties;  but  an  interference  improperly 
declared,  —  as  if,  for  instance,  the  devices  shown  by  the 
different  parties  are  not  really  the  same,  —  will  be  dissolved, 
upon  motion  to  that  effect. 

Specifications  can  not  be  amended  during  the  progress 
of  an  interference,  except  that,  if  an  applicant  has  clauses 
of  claim  not  involved  in  the  interference,  they  can  be 
withdrawn  from  the  interfering  application  and  made  the 
subject  of  another  and  new  application. 

For  a  further  elaboration  of  these  rules,  see  the  Patent 
Office  "  rules  of  practice." 

When  the  evidence  is  all  in  (and  this  is  now  required  to 
be  printed),  the  case  is  considered  upon  oral,  written,  or 
printed  argument. 

The  questions  to  be  answered,  with  reference  to  each  of 
the  parties,  are:  First,  Was  he  the  prior  inventor?  Sec- 
ond, Has  he  abandoned  his  invention?  Third,  Did  he 
allow  his  invention  to  be  in  public  use  or  on  sale  for  more 
than  two  years  prior  to  his  application? 

The  first  question  is  to  be  decided  in  accordance  with 
the  principles  we  have  laid  down  in  the  previous  chapter  on 
"  Prior  Invention,"  the  second-  in  accordance  with  the 
principles  laid  down  in  the  chapter  on  "Abandonment," 
and  the  third  in  accordance  with  the  principles  laid  down 
in  the  chapter  on  "  Public  Use." 

If  it  should  appear  that  one  of  the  parties  had  pirated  or 
copied  from  another,  that  would  destroy  all  his  rights  to  a 
patent. 

The  Office  does  not  recognize  the  grant  of  a  patent  more 
than  two  years  before  the  application  of  another  party  as 
necessarily  constituting  a  two  years'  public  use  against  the 


Manual  of   Patent  Law.  137 


subsequent  applicant.  Where  one  of  the  parties  was  both 
first  to  conceive  the  invention  and  the  first  to  reduce  it  to 
practice,  there  can  be  no  comparison  of  diligence  between 
him  and  subsequent  inventors.  Only  abandonment  or 
more  than  two  years'  public  use  will  defeat  his  right  to  a 
patent.1 

If  it  should  happen  to  appear,  clearly  and  unmistakably, 
that  an  invention  was  joint  while  applied  for  as  sole,  or 
vice  versa,  that  would  compel  the  Office  to  decide  against 
this  application  as  made;  but  that  would  be  solely  a  ques- 
tion between  the  Office  and  the  applicant,  with  which  the 
adverse  parties  have  nothing  to  do. 

There  is  no  limit  to  the  number  of  interferences  to  which 
an  application  or  patent  may  be  subjected,  and  a  patent 
without  going  through  an  interference  ordered  by  the  Com- 
missioner is  void.2 

Interference  cases  are  appealable  from  the  interference 
examiner  to  the  board  of  examiners-in-chief,  upon  payment 
of  a  fee  of  ten  dollars,  and  from  them  to  the  Commissioner 
in  person,  upon  payment  of  a  fee  of  twenty  dollars.  They 
are  not  appealable  to  the  Supreme  Court  of  the  District  of 
Columbia;3  but  the  applicant  who  is  denied  a  patent  may 
prosecute  his  claim  by  a  bill  in  equity  before  a  United 
States  Circuit  Court  having  jurisdiction,*  and  the  case 
is  appealable  from  this  court  to  the  United  States  Supreme 
Court. 


1  Rice  vs.  Winchester,  3  Official  Gazette,  348. 

2  Potter  vs.  Dixon,  2  Fisher's  Pat.  Cases,  381. 

3  Sections  46,  47,  68,  Act  of  July  8,  1870. 

4  Section  /.?,  Act  of  July  8, 1870. 


18 


138  Manual  of   Patent   Law 


CHAPTER    XVII. 

INFRINGEMENT. 

IT  is  an  infringement  of  a  patent,  to  either  make,  or 
sell,  or  use,  without  legal  permit,  anything  which  forms 
the  subject-matter  of  any  claim  or  clause  of  claim  in  a 
valid  patent;  for  a  patent  conveys  to  the  patentee  the 
exclusive  right  to  do  each  and  all  of  these  three  things 
during  the  existence  or  life  of  the  franchise.  A  person 
can  not  make,  for  his  own  use  or  for  exportation  from  the 
country,  without  infringing.  Judge  Story  once  intimated, 
that  a  person  might  make  a  patented  thing  for  the  purpose 
of  philosophical  experiment  merely,  or  to  verify  the  correct- 
ness of  the  specification,  but  not  for  profit,  without  being 
held  an  infringer.  There  seem  to  be  no  other  excuses 
Which  would  thus  avail.1 

The  intent  to  infringe  is  not  even  necessary,2  and  the 
patentee  need  not  notify  an  infringer  before  bringing  suit;3 
for  the  patent  is,  in  the  eye  of  the  law,  notice  of  the 
patentee's  rights  to  all  the  world. 

A  mere  workman  for  the  real  party  in  interest  is  not  an 
infringer,4  though,  if  one  party  were  to  hire  another  to 
make  or  use  patented  things,  both  would  be  held  in- 
fringers. 5 


1  Whittemore  vs.  Cutter,  1  Gallatin,  42Q. 

2  Parker  vs.  Hidme,  I  Fisher's  Pat.  Cases,  44. 

3  Ames  vs.  Howard,  I  Sumner,  482. 

4  Delano  vs.  Scott,  1  Gilpin,  489. 

5  Keplinger  vs.  Young,  10  Wheaton,  358.     Woodworth  vs.  Hall,  1  Wood.  6*  Miu.,  248. 


Manual  of  Patent  Law.  139 


The  sale  of  the  materials  of  a  patented  machine,  as  such, 
and  with  no  license,  express  or  implied,  to  use  the  machine 
as  a  machine,  is  not  an  infringement.1 

An  assignee,  grantee,  or  licensee  can  be  sued  for  infringe- 
ment as  well  as  any  one  else,  if  he  attempts  to  exercise 
rights  under  the  patent  not  contained  in  his  assignment, 
grant,  or  license.2 

The  use  of  patented  articles  upon  foreign  vessels  coming 
into  our  ports,  when  such  articles  were  acquired  with  proper 
intent  at  foreign  ports,  does  not  constitute  infringement.3 

Sales  of  patented  articles  by  persons  acting  as  agents  for 
other  real  owners,  the  salesmen  having  no  interest,  does 
not  make  the  salesmen  infringers.4 

It  has  been  held,  that  a  purchase,  from  a  wrongful  seller, 
of  a  patented  article,  by  the  patentee  or  for  his  account, 
does  not  constitute  an  infringement.5 

When  a  grantee  of  a  territorial  right  under  a  patent  sells 
the  patented  articles  to  another,  without  any  restrictions, 
such  other  person  may  take  the  articles  outside  the  grantee's 
territory  and  sell  or  use  them,  without  he  or  the  seller  being 
liable  as  an  infringer.6  Patentees  will  observe  that  this 
decision  is  a  most  important  one,  as  affecting  their  interests, 
and  that  all  grants  should  be  made  upon  the  express  condi- 
tion, that  the  grantee  shall  not  sell  the  patented  article 
to  be  sold  again  or  used  outside  his  territory,  if  he  can 
prevent  it,  and  that  the  grantee  shall,  when  selling  the 
patented  article  at  wholesale,  sell  with  the  restriction  that 
such  articles  shall  not  be  sold  outside  his  territory. 


1  Scnviii  vs.  Guild,  I  Gallatin,  485. 

2  Judson  &  Goodyear  vs.  Union  Rubber  Co.,  4  Blatchford. 

3  Broivn  vs.  Duchesne,  ig  Hcnvard,  IQ5. 

4  Potter  vs.  Cr<mell,  3  Fisher's  Pat.  Cases,  112. 

5  Sparkman  vs.  Higgins,  2  Blatchford,  30.    Byam  vs.  Billiard,  I  Curtis,  102. 

6  Adams  vs.  Burke,  4  Fisher's  Pat.  Cases,  3Q2. 


I4-Q  Manual  of  Patent  Law. 


In  proceeding  to  determine  whether  a  certain  article  is 
an  infringement  of  a  patent,  it  must  be  compared  separately 
with  each  clause  of  claim  in  the  patent;  for,  if  any  clause 
of  the  claim  is  infringed,  the  patent  is  infringed.  The 
claim  is  the  vital  part  of  a  patent,  and,  no  matter  whether 
the  actual  invention  be  greater  or  less,  the  question  of  in- 
fringement is  to  be  determined  upon  the  claim;  for  a 
patentee  must  stand  or  fall  by  the  claim  he  makes. 1 

A  patent  is  infringed  by  making,  using,  or  selling  the 
thing  as  described  and  claimed  in  the  patent;  and  the 
thing  described  and  claimed  in  the  patent  and  another 
thing  are  held  to  be  substantially  identical,  if  the  same 
result  is  attained  by  the  same  means  or  equivalents  for 
them.  The  topics  of  "substantial  identity"  and  "equiv- 
alents" have  been  already  discussed  in  former  pages  of 
this  book,  and  to  them  the  reader  is  referred. 

A  claim  will  generally,  if  not  always,  be  either  to  a 
specific  thing,  or  to  a  combination  of  different  elements, 
whatever  be  the  actual  wording,  and  this  whether  the  in- 
vention be  an  art  (that  is,  a  process),  a  machine,  a  manu- 
facture, or  a  composition  of  matter ;  and,  having  determined 
which  the  claim  is  for,  it  must  then  be  determined  whether 
the  thing  to  be  compared  with  the  patent  has  all  the  parts 
or  qualities  which  the  claim  makes  essential,  and,  if  such 
thing  have  not  all  these  parts,  then  it  does  not  infringe. 
Form,  size,  and  material  are  not  generally  essentials,  but 
they  may  be ; 2  but,  in  any  case,  it  matters  not  what  names 
are  given  to  parts  of  a  device, 3 —  the  real  question  is :  Do 
the  parts  compared  perform  the  same  office  in  substantially 
the  same  way? 


1  Meissner  vs.  Devoe  Mfg.  Co. ,  J  Fisher's  Pat.  Cases,  285. 

2  Adams  vs.  Edwards,  1  Fisher's  Pat.  Cases,  1. 

3  Graham  vs.  Mason,  J  Fisher's  Pat.  Cases,  I. 


Manual  of  Patent  Law.  141 


It  is  not  an  infringement  of  a  claim  for  a  combination, 
to  make,  or  use,  or  sell  any  of  the  elements  of  the  combi- 
nation less  than  the  whole,1  though  additions  to  a  combr 
nation  will  not  avoid  an  infringement,2  and  a  man  can 
not  use  another's  patented  invention  simply  because  he  has 
made  an  improvement  upon  it.  That  a  device  works  better 
or  worse  than  the  patented  device,  is  not  always,  nor  gener- 
ally, decisive  of  substantial  difference.3 

There  is  one  important  principle,  or  rule  of  construction 
of  the  claims  of  a  patent,  always  to  be  remembered.  If  a 
specific  thing  claimed,  or  if  an  element  of  a  combination 
is  in  a  new  field  of  invention,  and  is  the  first  of  its  kind,  a 
court  will  give  the  doctrine  of  equivalents  its  broadest 
application  as  applied  to  such  new  thing;  but,  if  the  specific 
thing,  or  the  element  of  a  combination,  is  itself  but  new  in 
degree,  —  an  improvement  upon  some  prior  existing  thing 
for  the  same  purpose,  —  then  the  court  will  only  hold  those 
things  substantially  identical  therewith  which  are  mere 
colorable  evasions  or  obvious  substitutes  therefor.4  This  is 
a  most  important  rule  of  construction ;  and  which  of  these 
views  is  to  be  taken  of  a  claim,  has  to  be  determined  often, 
and  generally,  by  an  investigation  outside  of  the  patent,  so 
as  to  determine  what  was  the  state  of  the  art,  with  which 
the  invention  was  most  closely  connected,  when  the  inven- 
tion was  made. 

To  constitute  an  infringement,  it  is  not  always  necessary 
that  a  person  should  technically  infringe  the  claim.  Where 
a  party  had  a  patent  for  a  combination  of  a  lamp-burner 
and  a  lamp-chimney,  another  party  made  and  sold  only  the 


1  Cahoon  vs.  Ring,  I  Fisher's  Pat.  Cases,  397. 

2  Johnson  vs.  Root,  I  Fisher's  Pat.  Cases,  351. 

3  ( 'nion  Paper  Bag  Co.  vs.  Binney,  J  Fisher's  PaL  Cases,  166.      Fa/es  vs.  H'enticorth,  J 
Fisher's  Pat.  Cases,  302. 

4  McCortnick  vs.  Talcott,  20  Harvard,  40J. 


142  Manual  of  Patent  Law. 


burner,  —  the  judge  held  such  makers  of  the  burners  in- 
fringers ; *  and,  where  one  party  had  a  patent  on  a  cartridge, 
and  another  party  made  and  sold  guns  designed  for  firing 
this  cartridge,  the  gun-maker  was  held  an  infringer. 2  In 
these  and  similar  cases,  the  intent  is  of  importance. 

Infringement  Suits.  Suits  for  infringement  can  only 
be  brought  in  the  name  of  the  owner  or  owners  of  the 
patent-right  for  the  district  or  territory  where  the  infringe- 
ment is  committed.  Assignees  of  the  whole  patent,  or 
grantees  of  particular  districts,  may  bring  suit  in  their  own 
names,  but  licensees  can  not.  The  licensor  is  the  proper 
person  to  bring  suit  for  injury,  in  the  nature  of  infringe- 
ment, to  the  rights  of  the  licensee. 

Suits  for  infringement  may  be  either  on  the  case  at  law 
or  by  a  bill  of  complaint'  in  equity.  Such  suits  are  now 
almost  always  brought  to  the  equity  side  of  the  court,  for 
the  reason  that  the  complainant  may,  if  he  be  entitled,  get 
with  little  trouble,  and  upon  mere  motion,  a  preliminary  or 
provisional  injunction.  He  is  not  compelled  to  go  into 
the  question  of  the  amount  of  damages  until  the  court  has 
settled  the  question  of  the  validity  of  the  patent  and  the 
question  of  infringement ;  and  a  perpetual  injunction  issues 
against  the  defendant,  as  a  matter  of  course,  upon  a  finding 
by  the  court  that  the  patent  is  valid  and  has  been  in- 
fringed; while,  in  suits  at  law,  injunctions  must  be  had  by 
separate  process,  and  the  trial  of  the  case  is  lumbered  up 
with  the  question  of  damages. 

Jurisdiction.  Upon  this  subject,  the  statute  of  July  8, 
1870,  enacts:  — 

1  Wallace  &■  Sou  vs.  Holmes,  Booth  &•  Haydeus,  5  Fisher's  Pat.  Cases,  37. 

2  Renwick  vs.  Pond,  J  Fisher's  Pat.  Cases,  j6g. 


Manual  of  Patent  Law.  143 


"  Sec.  55.  And  be  it  further  enacted,  That  all  actions, 
"  suits,  controversies,  and  cases  arising  under  the  patent 
"  laws  of  the  United  States  shall  be  originally  cognizable, 
"  as  well  in  equity  as  at  law,  by  the  circuit  courts  of 
"  the  United  States,  or  any  district  court  having  the  powers 
"  and  jurisdiction  of  a  circuit  court,  or  by  the  Supreme 
"  Court  of  the  District  of  Columbia,  or  of  any  territory; 
"  and  the  court  shall  have  power,  upon  bill  in  equity  filed 
"  by  any  party  aggrieved,  to  grant  injunctions  according  to 
"  the  course  and  principles  of  courts  of  equity,  to  prevent 
"  the  violation  of  any  right  secured  by  patent,  on  such 
"terms  as  the  court  may  deem  reasonable;  and  upon  a 
"  decree  being  rendered  in  any  such  case  for  an  infringe- 
"  ment,  the  complainant  shall  be  entitled  to  recover,  in 
"  addition  to  the  profits  to  be  accounted  for  by  the  defend- 
"  ant,  the  damages  the  claimant  [complainant]  has  sustained 
"  thereby,  and  the  court  shall  assess  the  same  or  cause  the 
"  same  to  be  assessed  under  its  direction,  and  the  court 
"  shall  have  the  same  powers  to  increase  the  same  in  its 
"  discretion  that  are  given  by  said  act  to  increase  the  dam- 
"  ages  found  by  verdicts  in  actions  upon  the  case;  but  all 
"  actions  shall  be  brought  during  the  term  for  which  the 
"  letters-patent  shall  be  granted  or  extended,  or  within  six 
"  years  after  the  expiration  thereof. 

"  Sec.  56.  And  be  it  further  enacted,  That  a  writ  of 
"  error  or  appeal  to  the  Supreme  Court  of  the  United  States 
"  shall  lie  from  all  judgments  and  decrees  of  any  circuit 
"  court,  or  of  any  district  court  exercising  the  jurisdiction 
"  of  a  circuit  court,  or  of  the  Supreme  Court  of  the  District 
"  of  Columbia  or  of  any  territory,  in  any  action,  suit,  con- 
"  troversy,  or  case,  at  law  or  in  equity,  touching  patent- 
"  rights,  in  the  same  manner  and  under  the  same  circum- 
"  stances  as  in  other  judgments  and  decrees  of  such  circuit 


144  Manual  of  Patent  Law, 


"  courts,  without  regard  to  the  sum  or  value  in  contro- 
"  versy. 

"  Sec.  59.  And  be  it  further  enacted,  That  damages 
"  for  the  infringement  of  any  patent  may  be  recovered  by 
"  action  on  the  case  in  any  circuit  court  of  the  United 
"  States,  or  district  court  exercising  the  jurisdiction  of  a 
"■  circuit  court,  or  in  the  Supreme  Court  of  the  District  of 
"  Columbia  or  of  any  territory,  in  the  name  of  the  party 
"  interested,  either  as  patentee,  assignee,  or  grantee.  And 
"  whenever,  in  any  such  action,  a  verdict  shall  be  rendered 
"  for  the  plaintiff,  the  court  may  enter  judgment  thereon 
"  for  any  sum  above  the  amount  found  by  the  verdict  as 
"  the  actual  damages  sustained,  according  to  the  circum- 
"  stances  of  the  case,  not  exceeding  three  times  the  amount 
"  of  such  verdict,  together  with  the  costs." 

All  suits  for  infringement  must  be  brought  in  United 
States  courts,  as  must  all  suits  intended  to  pass  upon  the 
validity  of  patents,  though  state  courts  have  authority  to 
enforce  contracts  relating  to  patents,  such  as  contracts  to 
assign  or  covenants  contained  in  a  license;  and  it  would 
seem  that,  where  a  state  court  has  parties  properly  before 
it,  and  a  patent  comes  in  question  collaterally,  its  validity 
may  be  inquired  into. 1 

Two  things  must  concur  to  give  a  United  States  court 
jurisdiction,  —  the  offense  of  infringement  must  be  com- 
mitted and  process  served  upon  the  infringer  within  the 
territorial  limits  of  the  district  over  which  the  court  holds 
sway. 

Perpetual  Injunctions.  When,  in  the  course  of  an 
equity  suit,  the  court,  on  final  hearing  upon  pleadings  and 
proofs,  finds  that  the  patent  is  valid,  and  that  it  has  been 

1    Meserole  vs.  Union  Paper  Collar  Co.,  3  Fisher's  Pat.  Cases,  483. 


Manual  of  Patent  Law.  145 


infringed,  the  court  grants,  as  a  matter  of  course,  a  per- 
petual injunction  against  the  infringer,  enjoining  and  re- 
straining him  from  any  further  infringement,  and,  if  the 
party  thus  enjoined  does  further  infringe  in  defiance  of 
such  injunction,  he  can  be  committed  to  jail  for  contempt 
of  court.  The  same  kind  of  injunction  will  be  issued  by 
the  equity  side  of  a  court  when  a  like  finding  has  been 
made  in  a  suit  at  law. 

Provisional  Injunctions.  There  is  another  kind  of 
injunction,  other  than  the  perpetual,  which  is  often  applied 
for  by  the  plaintiff  or  complainant  in  a  patent  suit,  and 
which  may  be  granted  or  withheld,  as  the  judge  in  his 
sound  discretion  may  decide.  These  injunctions  are  asked 
for  at  the  commencement  or  during  the  progress  of  a  suit, 
with  the  intent  that  the  defendant  may  be  restrained  from 
infringing  until  the  final  determination  of  the  case  and 
the  plaintiff's  right  to  a  perpetual  injunction  is  determined. 

Strictly  speaking,  there  are  no  such  things  as  precedents 
in  the  practice  of  granting  or  withholding  provisional  in- 
junctions ; '  for  every  petition  for  one  is  addressed  to  the 
sound  discretion  of  the  judge,  as  applied  to  the  facts  of 
the  case,  yet  there  are  some  recognized  and  general  rules 
with  regard  thereto. 

In  the  first  place,  courts  will  not,  as  a  rule,  grant  a  pro- 
visional injunction,  unless, — 

First,  —  There  has  been  some  previous  adjudication  on 
(and  sustaining)  the  patent,  where  the  same  points  of  val- 
idity and  infringement  were  in  issue,  or  unless, 

Second,  —  There  has  been  a  long  and  undisputed  enjoy- 
ment of  the  patent  privilege  under  the  patent,  and  the 

1    Farth  Closet  Co.  vs.  Femur,  s  Fisher's  Pat.  Cases,  ij. 
19 


146  Manual   of   Patent   Law. 


plaintiff  is  able  to  make  it  appear  that  the  defendant's 
device  and  his  own  are  substantially  identical. 

Where  there  has  been  no  previous  adjudication  on  the 
patent,  and  the  defendant  is  able  to  raise  a  strong  doubt  in 
the  mind  of  the  judge  as  to  the  validity  of  the  patent,  or 
as  to  whether  his  device  is  substantially  identical  with  the 
plaintiff 's,  questions  of  fact,  for  the  court  can  at  one  time 
as  well  as  another  determine  questions  of  law,  a  provisional 
injunction  will  be  refused. 

When  a  provisional  injunction  would  operate  unjustly 
upon  the  defendant,  or  when  it  would  cause  him  irreparable 
injury,  while  the  plaintiff  could  have  ample  satisfaction  in 
money  damages,  the  provisional  injunction  will  be  re- 
fused.1 

Where  the  plaintiffs  are  in  the  habit  of  granting  licenses 
under  their  patent,  the  court  will  sometimes  refuse  a  pro- 
visional injunction,  unless  the  defendants  refuse  to  take  and 
pay  for  a  license. 2 

As  a  lesser  hardship  upon  the  defendants,  and  especially 
when  a  provisional  injunction  would  work  great  harm  to 
the  defendant,  or  when  the  court  is  not  clear  that  an  in- 
junction should  issue,  the  court  will  sometimes  order  that 
the  defendants  keep  an  account  of  profits,  and  give  bond 
for  payment  of  damages,  pending  the  continuance  of  the 
suit. 

Damages.  In  an  action  at  law,  the  plaintiff  must  offer 
evidence  at  the  trial  whereby  the  jury  can  estimate  the 
profits  made  by  the  defendant  and  the  loss  suffered  by  the 
plaintiff  through  the  infringement ;   but,  in  an  equity  suit, 

1  Earth  Closet  Co.  vs.  Fenncr,  3  Fisher's  Pat.  Cases,  13.  Thayer  vs.  Wales,  3  Fisher's 
Fat.  Cases,  130.  Union  Paper  Bag-  Co.  vs.  Binney,  3  Fisher's  Pat.  Cases,  166.  Fales  vs. 
IVentiuorth,  3  Fisher's  Pat.  Cases,  ^02.  Miller  vs.  Androscoggin  Pulp  Co.,  3  Fisher's  Pat. 
Cases,  340.  Cook  vs.  Ernest,  3  Fisher's  Pat.  Cases,  396.  Moiury  vs.  Grand  Street  &•  North 
River  Railroad  Co.,  3  Fisher's  Pat.  Cases,  386. 

2  Baldn'in  vs.  Bernard,  3  Fisher's  Pat.  Cases,  442. 


Manual  of   Patent   Law.  147 


the  question  of  damages  is  not  gone  into  until  the  court 
has  sustained  the  validity  of  the  patent  and  adjudged  an 
infringement  against  the  defendant,  after  which  the  cause 
is  referred  to  a  master-in-chancery  for  an  accounting. 

The  rule  by  which  the  plaintiff's  damages  are  to  be  com- 
puted vary  somewhat  with  the  nature  of  the  case.  If  the 
plaintiff  is  in  the  habit  of  granting  licenses  under  his 
patent,  relying  upon  licenses  wholly  or  mainly  to  make 
the  patent  profitable,  then  the  usual  price  of  such  a  license 
will  be  taken  as  the  damages  to  be  found.1 

In  other  case's,  the  rule  is  to  give  the  plaintiff  such  dam- 
ages as  will  fully  remunerate  him  for  the  loss  caused  him  by 
the  infringer;2  and,  previous  to  the  Act  of  July  8,  1870, 
this  was  held  to  be  equivalent  to  the  profits  made  by  the 
defendant  through  his  infringement:  but  it  is  now  held, 
that,  if  the  plaintiff's  actual  loss  be  greater  than  the  de- 
fendant's profits,  the  plaintiff  may  collect  as  damages  such 
excess  of  loss,  together  with  the  defendant's  profits.3  In 
an  accounting  before  a  master-in-chancery,  the  defendant 
is  compelled  to  disclose  what  his  actual  profits  have  been. 
The  defeated  party  in  a  suit  has  to  pay  the  legal  costs 
of  such  suit,  but  counsel  fees  are  not  included  therein. 

Defenses.  The  statute  of  July  8,  1870,  enacts:  — 
"  Sec.  61.  And  be  it  further  enacted,  That,  in  any  ac- 
"  tion  for  infringement,  the  defendant  may  plead  the  gen- 
"  eral  issue,  and,  having  given  notice  in  writing  to  the 
"  plaintiff  or  his  attorney,  thirty  days  before,  may  prove 
"  on  trial  any  one  or  more  of  the  following  special  mat- 
ters:— 

1  Hogg  vs.  Emerson,  n  Hoivard,  607.    McCormick  vs.  Seymour,  3  Blatchford,  224. 

2  Piersou  vs.  liable  Screiv  Co.,  3  Story,  410.  Kneass  vs.  Schuylkill  Bank,  4  Washing- 
ton, 14. 

3  Careir  vs.  Boston  Elastic  Frog  Co.,  3  FisMtr's  Pat.  Cases,  go. 


148  Manual   of   Patent   Law. 


"  First,  —  That,  for  the  purpose  of  deceiving  the  public, 
"  the  description  and  specification  filed  by  the  patentee  in 
"  the  Patent  Office  was  made  to  contain  less  than  the  whole 
"  truth  relative  to  his  invention  or  discovery,  or  more  than 
"  is  necessary  to  produce  the  desired  effect;  or, 

"Second,  —  That  he  had  surreptitiously  or  unjustly  ob- 
"  tained  the  patent  for  that  which  was  in  fact  invented  by 
"  another,  who  was  using  reasonable  diligence  in  adapting 
"  and  perfecting  the  same;  or, 

"Third,  —  That  it  had  been  patented  or  described  in 
"  some  printed  publication  prior  to  his  supposed  invention 
"  or  discovery  thereof;  or, 

"Fourth,  —  That  he  was  not  the  original  and  first  in- 
"  ventor  or  discoverer  of  any  material  and  substantial  part 
"  of  the  thing  patented;  or, 

"Fifth,  —  That  it  had  been  in  public  use  or  on  sale 
"  in  this  country  for  more  than  two  years  before  his  appli- 
"  cation  for  a  patent,  or  had  been  abandoned  to  the 
"  public. 

"And  in  notices  as  to  proof  of  previous  invention, 
"  knowledge,  or  use  of  the  thing  patented,  the  defendant 
"  shall  state  the  names  of  patentees  and  the  dates  of  their 
"  patents,  and  when  granted,  and  the  names  and  residences 
"  of  the  persons  alleged  to  have  invented  or  to  have  had 
"  the  prior  knowledge  of  the  thing  patented,  and  where 
"  and  by  whom  it  had  been  used;  and  if  any  one  or  more 
"  of  the  special  matters  alleged  shall  be  found  for  the 
"  defendant,  judgment  shall  be  rendered  for  him  with 
"  costs.  And  the  like  defenses  may  be  pleaded  in  any 
"  suit  in  equity  for  relief  against  an  alleged  infringe  - 
"ment;  and  proofs  of  the  same  may  be  given  upon  like 
"notice  in  the  answer  of  the  defendant,  and  with  the  like 
"effect." 


Manual  of  Patent  Law.  149 


The  defense  permitted  by  the  second  clause  is  that  of 
"  prior  invention,"  that  of  the  third  clause  "  prior  publi- 
cation," that  of  the  fourth  clause  "  prior  use,"  and  that 
of  the  fifth  clause  "  public  use  for  more  than  two  years 
prior  to  application  "  and  "abandonment," — all  of  which 
topics  have  been  discussed  in  preceding  chapters. 

There  are  other  defenses  that  can  be  set  up.  The  defend- 
ant may  charge  that  the  specification  is  uncertain  and  am- 
biguous in  the  description  or  the  claim  or  both,  that  a 
combination  claimed  is  a  mere  aggregation,  that  he  has 
a  license,  that  the  plaintiff  is  not  the  legal  owner  of  the 
patent,  that  the  plaintiff  has  unreasonably  delayed  to  file  a 
disclaimer,  or  that  there  is  a  total  lack  of  utility  in  the 
alleged  invention ;  and  there  are  other  special  defenses. 

Questions  of  Law  and  Fact.  As  between  a  judge 
and  a  jury,  it  is  the  province  of  the  judge  to  pass  on  ques- 
tions of  law,  and  that  of  the  jury  to  pass  on  questions  of 
fact,  although  in  equity  cases  (which  comprise  the  great 
majority  of  all  patent  cases)  it  is  customary  for  the  judge 
to  pass  on  questions  of  fact  as  well  as  of  law. 

Without  attempting  anything  fine  and  subtle  in  distinc- 
tions, we  shall  classify,  in  a  general  way,  the  questions 
which  usually  arise  in  patent  causes. 

Questions  of  Law.  It  is  for  the  court  to  say  what 
the  patentee  claims  and  what  he  does  not  claim,1  and  it 
follows  that  it  is  for  the  court  to  say  whether  the  claim 
is  so  drawn  that  there  can  be  gathered  from  it  what  is 
meant  to  be  claimed;    or,   in  other  words,  to  determine 

1     Washburn  VS.  Could,  3  Story,  757. 


150  Manual  of  Patent  La 


w 


whether  there  is  ambiguity  in  the  claim.1  It  is  for  the 
court  to  say  whether  or  not  two  patents  claim  the  same 
thing,  and  it  is  for  the  court  to  say  whether  the  actual 
invention  is  one  kind  of  patentable  subject-matter,  as  a 
process,  while  another  kind,  as  a  machine,  is  claimed;2 
and,  also,  whether  the  invention  has  statutory  utility, — 
that  is,  any  utility,  in  contradistinction  from  being  frivo- 
lous, or  insignificant,  or  pernicious  in  its  purpose. 3 

Questions  of  Fact.  Abandonment  is  a  question  of 
fact.4  It  is  a  question  for  the  jury,  whether  two  things 
are  substantially  identical,  and  this  question  may  arise 
when  it  is  attempted  to  show  that  the  patented  thing  is 
anticipated  by  some  prior  thing,  or  in  determining  whether 
one  thing  infringes  a  certain  patent.5  It  is  for  the  jury 
to  say  whether  a  specification  is  in  such  full,  clear,  and 
exact  terms  as  to  enable  a  properly  skilled  person  to  put 
the  invention  in  practice,  working  by  the  specification,  — 
that  is,  to  determine  whether  there  is  ambiguity  in  the 
description/'  It  is  for  the  jury  to  say,  under  the  issue  of 
"prior  publication,"  whether  the  publication  is  a  full 
anticipation.  It  is  a  question  of  fact,  to  determine  the 
meaning  of  technical  terms  or  words  of  art  in  a  specifi- 
cation;7 also,  whether  one  device  has  superior  utility  over 
another.  Novelty  is  a  question  of  fact,  as  it  is  also  to 
determine  whether  a  concealment  or  redundancy  in  a 
specification  is  with  fraudulent  intent;8    also,  whether  an 

1  Davis  vs.  Palmer,  2  Brockway,  388.    Emerson  vs.  Hogg,  2  Blatchford,  6. 

2  Kay  vs.  Marshall,  2  Webster's  Pat.  Cases,  34. 

3  Langdon  vs.  De  Groot,  1  Paine 's  Circuit  Court  Reports,  203.  Lowell  vs.  Lewis,  1 
Mason,  182. 

4  Whittemore  vs.  Cutter,  I  Gallatin,  482. 

5  Smith  vs.  Higgins,  1  Fisher's  Pat.  Cases,  337. 
t>     JFood  vs.  Under/till,  3  Howard,  4. 

7  Washburn  vs.  Gould,  3  Story,  137. 

8  Gray  vs.  James,  Peters' s  Circuit  Court  Reports,  411. 


Manual  of   Patent  Law 


J51 


original  and  a  re-issued  patent  are  for  the  same  invention.1 
Whether  an  alleged  inventor  ever  conceived,  and  when 
he  conceived  an  invention,  whether  he  ever  reduced  it 
to  practice,  and  when,  whether  the  alleged  invention  was 
ever  in  public  use,  or  whether*  in  public  use  for  more  than 
two  years  prior  to  application  with  the  inventor's  allowance 
and  consent,  and  whether  an  invention  was  sole  or  joint, 
—  are  all  questions  of  fact. 

1     Carver  vs.  Braintree  Mfg.  Co.,  2  Story,  441. 


152  Manual   of   Patent   Law. 


CHAPTER    XVIII. 

EXTENSION. 

RELATIVE  to  this  subject,  the  statute  of  July  8, 
1870,  enacts:  — 

"Sec.  63.  And  be  it  further  enacted,  That  where  the 
"patentee  of  any  invention  or  discovery,  the  patent  for 
"  which  was  granted  prior  to  the  second  day  of  March, 
"  1 86 1,  shall  desire  an  extension  of  his  patent  beyond  the 
"  original  term  of  its  limitation,  he  shall  make  application 
"  therefor,  in  writing,  to  the  Commissioner,  setting  forth 
"  the  reasons  why  such  extension  should  be  granted;  and 
"  he  shall  also  furnish  a  written  statement,  under  oath,  of 
"  the  ascertained  value  of  the  invention  or  discovery,  and 
"  of  his  receipts  and  expenditures  on  account  thereof,  suffi- 
"  ciently  in  detail  to  exhibit  a  true  and  faithful  account  of 
"  the  loss  and  profit  in  any  manner  accruing  to  him  by 
"  reason  of  said  invention  or  discovery.  And  said  appli- 
"  cation  shall  be  filed  not  more  than  six  months  nor  less 
"  than  ninety  days  before  the  expiration  of  the  original 
"  term  of  the  patent,  and  no  extension  shall  be  granted 
"  after  the  expiration  of  said  original  term. 

"Sec.  64.  And  be  it  further  enacted,  That,  upon  the 
"  receipt  of  such  application,  and  the  payment  of  the  duty 
"  required  by  law,  the  Commissioner  shall  cause  to  be  pub- 
"  lished,  in  one  newspaper  in  the  city  of  Washington,  and 
"  in  such  other  papers  published  in  the  section  of  the 
"  country  most  interested  adversely  to  the  extension  of  the 
"  patent  as  he  may  deem  proper,  for  at  least  sixty  days 


Manual  of   Patent  Law.  153 


'  prior  to  the  day  set  for  hearing  the  case,  a  notice  of  such 
'  application,  and  of  the  time  and  place  when  and  where 
'  the  same  will  be  considered,  that  any  person  may  appear 
'  and  show  cause  why  the  extension  should  not  be  granted. 

"  Sec.  65.  And  be  it  further  enacted,  That,  on  the 
1  publication  of  such  notice,  the  Commissioner  shall  refer 
1  the  case  to  the  principal  examiner  having  charge  of  the 
1  class  of  inventions  to  which  it  belongs,  who  shall  make 
*■  to  said  Commissioner  a  full  report  of  the  case,  and  par- 
'  ticularly  whether  the  invention  or  discovery  was  new  and 
'  patentable  when  the  original  patent  was  granted. 

"  Sec.  66.  And  be  it  further  enacted,  That  the  Com- 
'  missioner  shall,  at  the  time  and  place  designated  in  the 
1  published  notice,  hear  and  decide  upon  the  evidence 
1  produced,  both  for  and  against  the  extension ;  and,  if  it 
1  shall  appear  to  his  satisfaction  that  the  patentee,  without 
'  neglect  or  fault  on  his  part,  has  failed  to  obtain  from  the 
'  use  and  sale  of  his  invention  or  discovery  a  reasonable 
'  remuneration  for  the  time,  ingenuity,  and  expense  be- 
'  stowed  upon  it,  and  the  introduction  of  it  into  use,  and 
1  that  it  is  just  and  proper,  having  due  regard  to  the  public 
'  interest,  that  the  term  of  the  patent  should  be  extended, 
'  the  said  Commissioner  shall  make  a  certificate  thereon, 
'  renewing  and  extending  the  said  patent  for  the  term  of 
'  seven  years  from  the  expiration  of  the  first  term,  which 
'  certificate  shall  be  recorded  in  the  Patent  Office,  and 
1  thereupon  the  said  patent  shall  have  the  same  effect  in 
1  law  as  though  it  had  been  originally  granted  for  twenty- 
*  one  years. 

"  Sec.  67.     And  be  it  further  enacted,.  That  the  benefit 
'  of  the  extension  of  a  patent  shall  extend  to  the  assignees 
,'  and  grantees  of   the  right,   to  use  the  thing  patented 
'  to  the  extent  of  their  interest  therein." 
20 


154  Manual  of  Patent  Law. 


The  Government  fee  upon  the  filing  of  an  application 
for  extension  is  fifty  dollars,  and  fifty  more  upon  the  allow- 
ance, making,  in  all,  one  hundred  dollars.1  If  a  patent 
has  been  re-issued  into  separate  divisions,  each  division  is 
treated  as  a  separate  patent,  and  requires  a  separate  appli- 
cation and  separate  fees. 

Extension  of  Design  Patents.  With  reference  to 
the  extension  of  design  patents,  the  statute  of  July  8,  1870, 
enacts :  — 

"  Sec.  74.  And  be  it  further  enacted,  That  patentees 
"  of  designs  issued  prior  to  March  2,  1861,  shall  be  enti- 
"  tied  to  extension  of  their  respective  patents  for  the  term 
"  of  seven  years,  in  the  same  manner  and  under  the  same 
"  restrictions  as  are  provided  for  the  extension  of  patents 
"  for  inventions  or  discoveries,  issued  prior  to  the  second 
"day  of  March,  1861." 

The  Patent  Office  has  decided  that  design  patents  granted 
between  March  2,  1861,  and  July  8,  1870,  are  not,  since 
the  passage  of  the  Act  of  July  8,  1870,  extensible.2  As  a 
patent  is  a  bargain  between  the  patentee  and  the  public;3 
as  one  of  the  considerations  moving  from  the  public  to  a 
patentee  of  a  design  patented  under  the  Act  of  March  2, 
1 86 1,  —  and  prior  to  the  Act  of  July  8,  1870,  —  was  that 
such  patent  should  be,  under  the  usual  conditions,  exten- 
sible; and  as  there  is  no  express  prohibition  in  the  Act  of 
July  8,  1870,  against  such  extensibility,  but  rather  a  pres- 
ervation of  the  right,4 — the  decision  of  the  Office  will 
probably  be  found,  upon  more  careful  consideration,  to  be 


1  Section  68,  Act  of  July  8,  1870. 

2  E.  W.  Sperry,  Commissioner' s  Decisions,  1870,  p.  ijg. 

3  Page  vs.  Ferry,  1  Fisher's  Pat.  Cases,  2q8. 

4  Section  in,  Act  of  July  8, 1870. 


Manual  of  Patent  Law.  155 


erroneous.1  Design  patents  granted  under  and  since  the 
passage  of  the  Act  of  July  8,  1870,  are,  clearly,  not  exten- 
sible. 

Patent  Office  Procedure.  As  the  mode  of  proced- 
ure relating  to  extensions  is  of  special  importance,  we  give 
under  this  head  the  more  important  portions  of  the  Patent 
Office  rules  upon  this  subject. 

The  applicant  for  an  extension  must  file  his  petition  and 
pay  in  the  requisite  fee  not  more  than  six  months  nor  less 
than  ninety  days  prior  to  the  expiration  of  his  patent.  No 
certificate  of  extension  will  be  signed  after  the  expiration 
of  the  patent. 

Any  person  who  intends  to  oppose  an  application  for  ex- 
tension must  give  notice  of  such  intention  to  the  applicant 
within  the  time  hereafter  named,  and  furnish  him  with 
a  statement  of  his  reasons  of  opposition.  He  must  also 
immediately  file  a  copy  of  such  notice  and  reasons  of  op- 
position, with  proof  of  service  of  the  same,  in  the  Patent 
Office.  After  this  he  will  be  regarded  as  a  party  in  the 
case,  and  will  be  entitled  to  notice  of  the  time  and  place 
of  taking  testimony,  to  a  list  of  the  names  and  residences 
of  the  witnesses  whose  testimony  may  have  been  taken  pre- 
vious to  his  service  of  notice  of  opposition,  and  to  a  copy 
of  the  application  and  of  any  other  papers  on  file,  upon 
paying  the  cost  of  copying.  If  the  extension  is  opposed 
on  the  ground  of  lack  of  novelty  in  the  invention;  the 
reasons  of  opposition  should  contain  a  specific  statement 
of  any  and  all  matter  relied  upon  for  this  purpose. 

The  applicant  for  an  extension  must  furnish  to  the  Office 
a  statement  in  writing,  under  oath,  of  the  ascertained  value 
of  the  invention,  and  of  his  receipts  and  expenditures  on 

1    See  Simonds  on  Design  Patents,  pp.  207-312. 


56  Manual  of  Patent  Law. 


account  thereof,  both  in  this  and  foreign  countries.  This 
statement  must  be  made  particular  and  in  detail,  unless 
sufficient  reason  is  set  forth  why  such  a  statement  can  not 
be  furnished.  It  must  in  all  cases  be  filed  within  ten  days 
after  filing  the  petition.  No  exceptions  will  be  made  to 
this  rule.  Such  statement  must  also  be  accompanied  with 
a  certified  abstract  of  title  and  a  declaration,  under  oath, 
setting 'forth  the  extent  of  applicant's  interest  in  the  exten- 
sion sought. 

The  questions  which  arise  on  each  application  for  an  ex- 
tension are:  First,  Was  the  invention  new  and  useful 
when  patented?  Second,  Is  it  valuable  and  important 
to  the  public,  and  to  what  extent?  Third,  Has  the  in- 
ventor been  reasonably  remunerated  for  the  time,  inge- 
nuity, and  expense  bestowed  upon  it,  and  the  introduction 
of  it  into  use?  —  if  not,  has  his  failure  to  be  so  remuner- 
ated arisen  from  neglect  or  fault  on  his  part?  Fourth, 
What  will  be  the  effect  of  the  proposed  extension  upon  the 
public  interests? 

No  proof  will  be  required  from  the  applicant  upon  the 
first  question,  unless  the  invention  is  assailed  upon  those 
points  by  opponents. 

To  enable  the  Commissioner  to  come  to  a  correct  con- 
clusion in  regard  to  the  second  point  of  inquiry,  the  appli- 
cant must,  if  possible,  procure  the  testimony  of  persons 
disinterested  in  the  invention,  which  testimony  should  be 
taken  under  oath.  This  testimony  must  distinguish  care- 
fully between  the  specific  devices  covered  by  the  claims  of 
the  patent  and  the  general  machine  in  which  those  devices 
may  be  incorporated. 

In  regard  to  the  third  point  of  inquiry,  in  addition  to 
his  own  oath,  showing  his  receipts  and  expenditures  on 
account  of   the   invention,   the  applicant  must  show,  by 


Manual  of   Patent  Law.  157 


testimony  under  oath,  that  he  has  taken  all  reasonable 
measures  to  introduce  his  invention  into  general  use  j  and 
that,  without  neglect  or  fault  on  his  part,  he  has  failed 
to  obtain  from  the  use  and  sale  of  the  invention  a  reason- 
able remuneration  for  the  time,  ingenuity,  and  expense 
bestowed  on  the  same,  and  the  introduction  of  it  into  use. 

In  case  of  opposition  to  the  extension  of  a  patent  by  any 
person,  both  parties  may  take  testimony,  each  giving  rea- 
sonable notice  to  the  other  of  the  time  and  place  of  taking 
said  testimony,  which  shall  be  taken  according  to  the  rules 
hereinafter  prescribed. 

Any  person  desiring  to  oppose  an  extension  must  serve 
his  notice  of  opposition,  and  file  his  reasons  therefor,  at 
least  ten  days  before  the  day  fixed  for  the  closing  of  testi- 
mony ;  but  parties  who  have  not  entered  formal  opposition 
in  time  to  put  in  testimony  may,  at  the  discretion  of  the 
Commissioner,  be  permitted  to  appear  on  the  day  of  hear- 
ing, and  make  argument  upon  the  record  in  opposition  to 
the  grant  of  the  extension.  But  in  such  case  good  cause 
for  the  neglect  to  make  formal  opposition  must  be  shown. 

In  contested  cases,  no  testimony  will  be  received,  unless 
by  consent,  which  has  been  taken  within  thirty  days  next 
after  the  filing  of  the  petition  for  the  extension. 

Service  of  notice  to  take  testimony  may  be  made  upon 
applicant,  upon  the  opponent,  upon  the  attorney  of  record 
of  either,  or,  if  there  be  no  attorney  of  record,  upon  any 
attorney  or  agent  who  takes  part  in  the  service  of  notice  or 
in  the  examination  of  the  witnesses  of  either  party.  Where 
notice  to  take  testimony  has  already  been  given  to  an  oppo- 
nent, and  a  new  opponent  subsequently  gives  notice  of  his 
intention  to  oppose,  the  examination  need  not  be  postponed, 
but  notice  thereof  may  be  given  to  such  subsequent  oppo- 
nent by  mail  or  telegraph.     This  rule,  however,  does  not 


158  Manual   of   Patent   Law. 


apply  to  ex-parte  examinations,  or  those  of  which  no  notice 
has  been  given  when  notice  of  opposition  is  served. 

In  the  notice  of  the  application  for  an  extension,  a  day 
will  be  fixed  for  the  closing  of  testimony,  and  the  day  of 
hearing  will  also  be  named.  Application  for  a  postpone- 
ment of  the  day  of  hearing,  or  for  further  time  for  taking 
testimony,  must  be  made  and  supported  according  to  the 
same  rules  as  are  to  be  observed  in  other  contested  cases; 
but  they  will  not  be  granted  in  such  a  manner  as  to  cause  a 
risk  of  preventing  a  decision  prior  to  the  expiration  of  the 
patent.  Immediately  upon  the  closing  of  the  testimony 
the  application  will  be  referred  to  the  examiner  in  charge 
of  the  class  to  which  the  invention  belongs  for  the  report 
required  by  law;  and  said  report  shall  be  made  not  less 
than  five  days  before  the  day  of  hearing.  As  this  report  is 
intended  for  the  information  of  the  Commissioner,  neither 
the  parties  nor  their  attorneys  will  be  permitted  to  make 
oral  arguments  before  the  examiner.  In  contested  cases, 
briefs  are  deemed  desirable,  and  these  should  always  be 
filed  at  least  five  days  before  the  day  of  hearing. 

The  papers,  etc.,  to  be  forwarded  to  the  Patent  Office, 
which  go  to  make  a  complete  application  for  an  extension, 
are, — 

1.  The  letters-patent  sought  to  be  extended.  If  these 
are  lost  or  destroyed,  then  the  applicant  must  procure  from 
the  Patent  Office,  and  file  with  his  application,  a  certified 
copy  of  such  letters-patent,  accompanied  by  an  affidavit 
stating  the  fact  of  and  circumstances  attending  such  loss 
or  destruction. 

2.  A  certified  abstract  of  title  to  the  patent  (which  has 
to  be  procured  from  the  Patent  Office). 

3.  The  petition  for  extension. 


Manual  of   Patent  Law.  159 


4.  A  statement  and  account,  giving  a  full  history  of  the 
invention  from  first  to  last,  showing  the  efforts  made  by  the 
inventor  to  introduce  and  develop  his  invention,  and  giving, 
as  fully  as  possible,  an  account  of  all  income  derived  from 
the  invention,  both  in  this  and  in  foreign  countries,  and 
expenditures  and  losses  on  account  thereof. 

5.  An  oath  to  the  truth  of  the  statement#and  account. 

6.  A  fee  of  fifty  dollars. 

It  is  not  generally  advisable  to  take  testimony  in  support 
of  an  extension  till  thirty  days  after  the  filing  of  the  appli- 
cation, because,  if  the  extension  is  opposed,  the  Office  will 
not  consider  such  testimony. 

The  applicant  must  furnish  the  Commissioner  with  the 
affidavits  of  disinterested  parties  giving  data,  to  enable  the 
Commissioner  to  form  an  opinion  as  to  the  value  of  the 
invention,  and  the  applicant  should  also  furnish,  as  far  as 
practicable,  affidavits  of  other  parties  to  support  his  allega- 
tions made  in  his  "  statement  and  account." 

Any  person  may  oppose  an  extension,  under  the  condi- 
tions laid  down  by  the  Office  "  rules  of  practice,"  and,  in 
case  of  such  opposition,  testimony  may  be  taken  pro  and 
con,  as  provided  for  by  the  Office  rules,  and  the  case  regu- 
larly argued  before  the  Commissioner. 

We  can,  perhaps,  in  the  space  at  our  disposal,  give  no 
better  information  as  to  the  opinions  and  practice  of  the 
Patent  Office  in  extension  cases,  than  that  given  by  the 
following  selection  from  the  digest  of  the  Commissioner's 
decisions  for  1870:  — 

IN    GENERAL. 

"  The  extension  of  a  patent  for  a  process  refused,  al- 
"  though  the  principle  involved  had  proved  to  be  of 
11  extraordinary  value;    it  having  been  rendered  available 


1 60  Manual   of   Patent   Law. 


"  for  useful  purposes  only  through  the  great  labor  and  ex- 
"  pense  bestowed  upon  developing  it  by  another  independ- 
"  ent  and  original  inventor,  in  which  the  applicant  had 
"  taken  no  part." —  Christian  Shimk,  10. 

"It  is  no  ground  for  refusing  the  extension  of  a  patent, 
"  that  the  patentee  has  sold  his  interest  in  it  for  an  inade- 
"  quate  price,  if  the  purchasers  have  subsequently  secured 
"  to  him  a  substantial  remuneration  if  it  is  granted." — Owen 
Dorsey,  17. 

"  A  patent  will  not  be  extended,  if  devices  not  shown  in 
"  the  original  application  have  been  interpolated  on  a  re- 
"  issue."  —  A.  G.  Bevin,  68. 

"  A  patent  will  not  be  extended,  if  the  invention  mono- 
"  polized  has  been  anticipated."  —  W.  H.  King,  79. 

NOVELTY    AND    UTILITY. 

"  A  patent  with  a  claim  so  broad  that  it  is  found  to  in- 
"  elude  old  devices,  will  be  extended  only  on  filing  a  dis- 
"  claimer  of  everything  except  what  is  ascertained  to  be 
"  new."  —  B.  F.  Avery,  1 ;  R.  Prat? s  administrator,  2. 

"  A  patented  machine  having  proved  highly  useful,  the 
"differences  between  it  and  former  unsuccessful  machines 
"  should  not  be  nicely  weighed  upon  a  petition  for  an 
"  extension."  —  Cyrus  Chambers,  Jr.,  124. 

"  Patents  for  impracticable  devices  should  not  be  ex- 
"  tended." — /.  M.  Singer,  146. 

VALUE   AND    IMPORTANCE. 

"  Where  the  estimate  of  the  value  of  an  invention,  pre- 
"  sented  in  the  statement  of  the  patentee,  was  founded 
"  mainly  on  sales  by  an  assignee  who  had  greatly  improved 
"  the  construction  of  the  article,  and  the  only  features  in  it 


Manual  of  Patent  Law.  161 


"  really  new  were  found  to  be  of  slight  importance,  an 
94  extension  of  the  patent  was  refused." — Calvin  Dodge,  23. 

99  Where  the  invention  covered  by  a  patent  appeared  to 
"  be  of  small  value,  except  as  the  broad  claims  embraced  in 
"  it  enabled  the  patentee  to  place  others  under  contribution, 
M  the  extension  of  it  was  refused." — J.  R.  Harrington,  27. 

99  Where  the  evidence  as  to  the  value  of  the  inventions 
"  embraced  in  several  divisions  of  a  re-issued  patent  is 
94  general,  and  does  not  discriminate  between  them,  and 
"  some  of  them  are,  upon  the  face  of  them,  comparatively 
"  worthless,  the  mere  estimate  of  the  applicant  to  the 
"  contrary  does  not  entitle  him  to  an  extension  of  those 
"  divisions. "  —  W.  Hunt's  administrators,  29. 

99  The  Office  will  inquire  whether  an  invention  possesses 
94  sufficient  importance  to  justify  the  extension  of  a  patent, 
"  although  its  novelty  has  been  sustained  in  a  suit  at  law." 
—  George  Johnson,  administrator,  86. 

"  When  it  appears  that  no  machine  of  the  nature  of  the 
"  one  patented  has  ever  gone  into  use,  it  is  to  be  presumed 
"  that  it  is  of  little  value;  and  the  patent  for  it  will  not  be 
1 '  extended  to  embarrass  other  inventors. ' '  —  Darlington 
and  Piper,  ijj. 

AMOUNT   OF   REMUNERATION. 

"  Enlarging  dies  which'have  been  used  for  forming  parts 
"  of  a  bonnet,  so  as  to  form  the  whole  at  one  operation, 
"  requires  little  ingenuity,  and  it  may  be  questioned  whether 
94  $2,036.39  is  not  a  sufficient  remuneration  for  it."  —  Wil- 
liam Osoorn's  administratrix,  80. 

94  Where  the  evidence  of  the  value  of  an  invention  is  in- 
"  sufficient,  and  it  is  apparently  an  insignificant  one,  the 
99  sum  of  $1,697.58  will  be  deemed  an  adequate  remunera- 
"  tion  for  it." — Charles  Moore,  8j. 
21 


162  Manual   of   Patent   Law. 


"  Where  the  patentee  has  made  a  close  monopoly  of  his 
"  invention,  and  would  have  had  no  manufacture  or  profits 
"  but  for  his  patent,  he  can  not,  upon  applying  for  an 
"  extension,  deduct  anything  for  manufacturer's  profits 
"  from  the  amount  he  has  received." — Carlos  French,  118. 

"  A  highly  valuable  patent  should  be  extended  where  the 
"  patentee  has  exercised  great  energy  and  determination  in 
"■  introducing  the  invention  into  use,  though  he  has  realized 
"  $30,000  from  it,  besides  a  liberal  allowance  for  his  time 
"and  services."— T.  T.  Woodruff,  161. 

"  A  patentee  who  had  given  himself  mainly  to  the  manu- 
"  facture  and  sale  of  his  invention,  and  had  realized  $33,000 
'*.  from  it,  was  held  to  be  entitled  to  further  remuneration, 
"  and  his  patent  was  extended." — We?idell  Wright,  167. 

"  Where  the  patentee  had  been  at  no  expense  of  time  or 
"  labor  in  obtaining  his  patent  and  introducing  the  inven- 
"  tion  into  use,  and  it  was  not  of  a  high  order,  the  sum  of 
"  $62,269,  which  he  had  realized  from  it,  was  held  to  be  a 
"sufficient  remuneration,  and  an  extension  was  denied 
"  him."—/.  Z.  Baudelot,  184. 

DILIGENCE. 

"  The  extension  of  a  patent  refused  when  it  appeared 
"  that  it  had  been  sold  for  a  trifle  about  a  year  after  it  was 
"  issued,  and  the  ascertained  value  of  the  invention  was  not 
"  set  forth  in  the  applicant's  statement." — R.  W.  Lewis,  8. 

"An  extension  refused  where  none  of  the  articles  pat- 
dented  had  ever  been  manufactured;  either  they  must 
"  have  been  wanting  in  utility,  or  no  diligence  was  exerted 
"  in  introducing  them."  —  William  Montstorm,  97. 

"  A  patentee  can  not  have  an  extension  if  he  has  neg- 
"  lected  a  favorable  opportunity  to  sell  his  invention  at 
"  a  remunerative  price."  — -.S.  A.  Knox,  126. 


Manual  of  Patent  Law.  163 


"  The  patentee  of  a  valuable  improvement,  who  had  not 
"  the  means  of  introducing  it,  and  sold  it  for  a  sum  wholly 
"  inadequate  to  remunerate  him,  although  upon  condition 
"  of  being  furnished  with  employment  in  the  manufacture, 
11  was  allowed  an  extension."  —  George  Thompson,  128. 

"  The  patentee  of  a  warlike  invention,  who  took  part  in 
"  the  rebellion  instead  of  employing  it  in  the  service  of 
"  the  Government,  can  not  be  considered  as  having  used 
"  due  diligence  in  introducing  it  into  use,  and  his  patent 
"  for  it  will  not  be  extended." — J.  B.  Read,  137. 

V  If  it  appears  that  a  large  amount  is  due  from  infringers, 
"  a  patent  should  not  be  extended." — /.  M.  Singer,  14.6. 

"  Where  the  patentee  sold  half  the  patent,  and  within 
"  three  years  realized  $3,000  from  manufacturing  jointly 
"  with  the  purchasers  under  it,  and  his  executors  then  sold 
"  the  other  half  for  $400,  they  were  held  not  to  have  used 
"  proper  diligence,  and  an  extension  was  denied  them."  — 
Gleason  and  Crossman,  158. 

POLICY. 

"  In  considering  the  question  of  extending  a  patent,  the 
"  Commissioner  should  have  regard  to  the  interests  of  the 
"  public;  and,  if  the  extension  would  be  prejudicial  to  an 
"  extensive  and  useful  business,  that  may  be  a  sufficient 
"  reason  for  denying  it." — Henry  Bessemer,  9. 

"  The  extension  of  a  patent  for  the  manufacture  of  Bes- 
"  semer  steel  refused,  on  the  ground  that  the  foreign  patents 
"  had  expired,  and  the  extension  would  enable  foreign 
"manufacturers  to  control  the  business." — Henry  Besse- 
mer, p. 

"  A  patent  will  be  extended,  although  the  foreign  patents 
"  for  the  same  invention  have  expired,  if  the  products  of 


164  Manual  of  Patent  Law. 


"  it  manufactured  abroad  can  not  be  imported  so  as  to 
"  compete  in  market  with  those  made  in  this  country."  — 
Henry  Voelter,  84. 

"  The  extension  of  a  patent  refused  when  the  patentee 
"  had  sold  all  his  interest  in  it  for  a  trifling  consideration." 
—  William  Gage,  100. 

An  important  thing  to  be  remembered  is,  that  the  policy 
and  intent  of  the  law  is  to  grant  extensions  for  the  benefit 
of  inventors  or  their  heirs,  and  not  for  the  benefit  of  mere 
assignees;  and,  if  it  appear  that  the  inventor  has  assigned, 
or  agreed  to  assign,  the  extension  for  nothing  or  for  a  tri- 
fling consideration,  the  Office  will  refuse  the  extension.  If, 
however,  the  inventor  retains  a  respectable  interest  in  the 
extended  term  or  assigns  upon  the  consideration  of  a  sub- 
stantial royalty,  that  will  not  prevent  the  allowance  of  the 
extension. 

Patents  can  be  extended  upon  the  application  of  the  ex- 
ecutors or  administrators  of  deceased  inventors  for  the 
benefit  of  the  heirs.1 

Patents  of  all  kinds  granted  prior  to  March  2,  1861,  are 
extensible,  but  patents,  other  than  for  designs,  granted  since 
that"  date  are  not  extensible. 

Patents  are  sometimes  extended  by  special  act  of  Con- 
gress, and  such  extended  terms  stand  upon  the  same  footing 
as  if  legally  granted  by  the  Commissioner  of  Patents. 2 

When  a  patent  has  been  extended  by  the  Commissioner, 
his  action  is  conclusive  as  to  all  the  facts  he  is  required  to 
find,  and  can  not  be,  afterward,  disputed  except  on  proof 
of  fraud  in  the  allowance  of  the  extension,3    and  an  in- 

1  Brooks  vs.  Bicknell,  3  McLean,  436.     JVoodiuorth  vs.  Wilson,  4  Howard,  716. 

2  Evans  vs.  Eaton,  3  Wheaton,  J18. 

3  Colt  vs.  Young-,  2  Blatchford,  4J3.  Clum  vs.  Brewer,  2  Curtis,  Ji8.  Goodyear  vs. 
P.  R.  Co.,  2  Fisher's  Pat.  Cases,  4Q8. 


Manual  of  Patent  Law.  165 


fringer  can  not  be  permitted  to  raise  the  question  of  fraud 
in  defense  of  a  suit  brought  against  him  for  infringement. l 
Neither  an  assignment,  grant,  or  license  made  during  the 
existence  of  the  original  term  will  have  any  force  or  effect 
upon  an  extended  term,  unless  expressly  stated  as  applying 
to  the  extended  term,  or  unless  the  fair  implication  of  the 
instrument  is  that  it  is  to  have  effect  under  an  extended 
term ; 2  but  any  person  legally  in  possession  of  a  patented 
machine  may  continue  the  use  of  it  during  the  extended 
term,3  subject,  however,  to  any  conditions  or  restrictions 
that  existed  during  the  original  term.4 

1  Tilghman  vs.  Mitchell,  4  Fisher's  Pat.  Cases,  6iJ. 

2  JVoodivorth  vs.  Sherman,  3  Story,  174.    Brooks  vs.  Bicknell,  4  McLean,  66-67.    Day 
vs.  Candee,  3  Fisher's  Pat.  Cases,  g. 

3  Wilson  vs.  Rosseau,  4  Ho7vard,  682. 

4  Day  vs.  Union  Rubber  Co.,  3  Blatchford,  4QI. 


166  Manual  of  Patent  Law. 


CHAPTER    XIX. 

DESIGN  PATENTS. 

THE  statute  of  July  8,  1870,  enacts  as  follows  upon 
this  subject :  — 

"  Sec.  71.  And  be  it  further  enacted,  That  any  person 
"who,  by  his  own  industry,  genius,  efforts,  and  expense, 
"  has  invented  or  produced  any  new  and  original  design 
"  for  a  manufacture,  bust,  statue,  alto-relievo,  or  bas-relief; 
"  any  new  and  original  design  for  the  printing  of  woolen, 
"  silk,  cotton,  or  other  fabrics;  any  new  and  original  im- 
"  pression,  ornament,  pattern,  print,  or  picture,  to  be 
"  printed,  painted,  cast,  or  otherwise  placed  on  or  worked 
"  into  any  article  of  manufacture;  or  any  new,  useful,  and 
"  original  shape  or  configuration  of  any  article  of  manu- 
"  facture,  the  same  not  having  been  known  or  used  by 
"  others  before  his  invention  or  production  thereof,  or  pat- 
"  ented  or  described  in  any  printed  publication,  may,  upon 
"  payment  of  the  duty  required  by  law,  and  other  due  pro- 
"  ceedings  had  the  same  as  in  cases  of  inventions  or  discov- 
"  eries,  obtain  a  patent  therefor." 

The  Patent  Office  does  not  require  that  models  shall 
accompany  applications  for  design  patents.  Design  patents 
are  granted  for  three  and  a  half  years  upon  a  fee. of  ten 
dollars,  or  for  seven  years  upon  a  fee  of  fifteen  dollars,  or 
for  fourteen  years  upon  a  fee  of  thirty  dollars,  as  the  appli- 
cant, in  his  application,  may  elect. ! 

1    Sections  73-75,  Act  of  July  8,  1870. 


Manual  of  Patent  Law.  167 


Design  patents  granted  prior  to  March  2,  1S61,  are  made 
extensible,  like  other  patents,  by  section  74  of  the  Act  of 
July  8,  1870.  The  Patent  Office  has  decided  that  design 
patents  granted  subsequent  to,  and  under  the  Act  of  March 
2,  1 86 1,  are  not,  since  the  passage  of  the  Act  of  July  8, 
1870,  extensible;1  but  this  is  believed  to  be  a  mistake.2 
Design  patents  granted  since,  and  under  the  Act  of  July  8, 
1870,  are  clearly  not  extensible. 

The  Patent  Office  has,  also,  decided  that  designs  are  not 
entitled  to  two  years'  use  prior  to  application,  like  mechan- 
ical inventions;  but  this  is  also,  probably,  a  mistake.3 

The  Patent  Office,  until  of  late,  held  that  new  shapes, 
patterns,  etc.,  whose  object  and  purpose  is  utility,  were  pat- 
entable as  designs;  but  it  now,  and  correctly,  holds  that 
only  those  things,— mentioned  in  section  71  of  the  Act  of 
July  8,  1870,  as  patentable  subjects, — whose  object  and 
purpose  is  cesthetic  or  ornamental,  are  properly  patentable 
as  designs.  This  question  has  lately,  and  for  the  first  time, 
been  before  the  Supreme  Court,  when  the  latter  view  was 
sustained,  and  the  court  held  that  it  is  the  appearance  given 
to  a  tangible  object  by  a  design  which  constitutes  the  real 
essence  for  which  a  design  patent  is  given,  no  matter  by 
what  means  this  appearance  is  produced ;  and  that,  if  one 
design  is  so  like  another,  even  if  there  are  minor  differ- 
ences, as  to  cause  a  common  observer,  such  as  a  casual 
purchaser,  giving  common  and  ordinary  attention,  to  mis- 
take the  one  for  the  other,  then  the  two  designs  are  sub- 
stantially identical,  and,  if  one  be  patented,  the  other  is 
an  infringement.4 


1  /:'.  W.  Sperry,  Commissioner' s  Decisions,  1870. 

2  See  previous  chapter  on  "  Extension." 

3  Root  vs.  Ball  &■  Davis,  4  McLean,  177. 

4  Gorham  Mfg.  Co.  vs.  White,  z  Patent  Office  Ga 


i68 


Manual  of  Patent  Law. 


Expert  testimony  in  design  cases  seems  thereby  to  be 
done  away  with. 

Applications  for  design  patents  receive  the  same  treat- 
ment in  the  Patent  Office  as  applications  for  other  patents. 


Manual  of  Patent  Law.  169 


CHAPTER    XX. 

FORMS 

For  Assignments,  Grants,  Licenses,  Mortgages,  Etc. 


NOT12.     The  words  in  italics  are  those  which  are  to  be  changed  to  suit  different  cases. 
Where  changes  are  to  be  ?nade  from  singular  to  plural,  or  vice  versa,  italics  are  not  used. 


No.  1.     Assignment  of  Entire  Interest  before 
Issue  of  Patent. 

In  consideration  of  one  dollar,  the  receipt  whereof  in  full 
is  hereby  acknowledged,  I  hereby  sell  and  assign  to  John 
operative  Smith,  of  Hartford,  Connecticut,  the  whole  right 
aause.  an(j  titie  to  letters-patent  of  the  United  States, 
to  be  issued  upon  my  application  therefor,  for  improvement 
in  plows,  which  I  executed  January  2, 18/4  (if  application 
has  been  filed,  say  "  and  filed  in  the  Patent  Office.") 

And  I  covenant  to  and  with  said  assignee,  his  heirs  and 
assigns,  that  I  have  full  right  to  assign  said  invention  and 
covenant      letters-patent    in   manner  and    form  as  above 
as  to  Title.     written,  and  that  the  interest  hereinbefore  con- 
veyed is  free  from  all  prior  assignment,  grant,  mortgage, 
license,  or  other  incumbrance  whatever. 

And  I  covenant  to  and  with  said  assignee,  his  heirs  and 

assigns,  that  I  will,  whenever  the  legal  counsel  of   said 

covenant      assignee,  his  heirs  or  assigns,  shall  advise  me 

/or  Re-issues.   t^t  a  re_issue  0f  said  letters-patent  is  lawful 

22 


170  Manual  of  Patent  Law. 


and  desirable,  sign  all  papers,  take  all  rightful  oaths,  and 
do  all  acts  necessary  or  convenient  to  the  procurement  of 
such  re-issue,  without  charge  to  said  assignee,  but  at  his 
expense. 

And  I  authorize  and  request  the  Commissioner  of  Patents 
Request  to     to  issue  said  letters-patent  to  said  assignee  for 
commissioner.  t^e  soie  use  an(j  behoof  of  said  assignee,  his 
heirs  and  assigns. 

In  witness  whereof,  I  have  hereto  set  my  hand  and  seal, 
as  of  and  for  the  thirty-Jlrst  day  of  March,  A.D.  18 J 4. 

A.  B.   <gg& 


No.  2.     Assignment  of  Undivided  (Half)  Interest 
before  Issue  of  Patent. 

(Same  as  No.  1,  except  as  follows:  In  the  operative  clause, 
insert,  just  before  the  words  "  the  whole  right,"  the  words 
"one  undivided  half  part  of."  The  covenant  for  re-issues 
may  well  be  omitted ;  and  in  its  place  insert,  if  so  desired, 
the  following  clause :  — ) 

This  assignment  is  made  upon  the  following  express  con- 
dition, forming  an  integral  part  of  such  assignment,  to 
joint  Protective  which  condition  I,  for  myself,  my  heirs  and 
condition.  assjgnSj  assent  by  the  act  of  signing  this  instru- 
ment, and  to  which  condition  said  assignee,  for  himself, 
his  heirs  and  assigns,  assents  by  his  acceptance  of  this  in- 
strument, or  by  doing  or  attempting  to  do  any  act  under  its 
authority ;  to  wit :  neither  he  nor  I  have  or  shall  have  any 
right  or  power  to  make  any  license  or  other  privilege  under 
or  relating  to  said  patent,  without  that  both  and  all  the 
owners  of  the  patent  join  in  the  same  in  writing;  and  nei- 


Manual  of   Patent  Law.  171 


ther  he  nor  I  have  or  shall  have,  separately,  the  right 
to  make,  or  sell,  or  use  any  material  part  of  the  invention 
forming  the  subject-matter  of  said  letters-patent,  without 
that  the  party  thus  making,  or  selling,  or  using  shall  secure 
and  pay  to  the  other  party  or  parties,  part  owners  of  said 
patent,  such  part  of  the  net  profits  arising  from  such  manu- 
facture, sale,  or  use  as  the  part  of  said  patent  owned  by 
such  other  party  or  parties  last  mentioned,  bears  proportion 
to  the  whole  patent. 

(The  request  to  the  Commissioner  should  read — ) 
And  I  authorize  and  request  the  Commissioner  of  Patents 
Request  to     to  issue  said  letters-patent  to  said  assignee  and 
commissioner.  mySe}f  jointly,  for  the  sole  use  and  behoof  of 
said  assignee  and  myself,  our  heirs  and  assigns. 


No.  3.    Assignment  of  Entire  Interest  after  Issue 
of  Patent.     By  the  Inventor. 

For  the  consideration  of  one  dollar,  the  receipt  whereof  in 
full  is  hereby  acknowledged,  I  do  hereby  sell  and  assign  to 

operative      John  Smith,  of  Hartford,  Connecticut,  the  whole 

aause.       right  and  title  to  letters-patent  of  the  United 

States,  No.  142,456,  dated  July  4,  iS/j,  for  improvements 

in  plows,  to  be  held  and  enjoyed  by  him,  his  heirs  and 

assigns,  for  the  full  term  of  said  patent. 

(Insert  covenant  as  to  title  and  covenant  for  re-issue,  as 
in  No.  1.) 

In  witness  whereof,  I  hereto  set  my  hand  and  seal,  as  of 
and  for  the  thirty-first  day  of  March,  A.D.  1874. 

A.  B.   4$, 


172  Manual  of  Patent  Law. 


No.  4.     Assignment  of  Undivided  (Half)  Interest 
after  Issue.     By  the  Inventor. 

(Same  as  No.  3,  except  as  follows:  In  the  operative  clause, 
immediately  before  the  words  "the  whole  right,"  insert 
the  words  "  one  undivided  half  part  of."  Omit  the  cove- 
nant for  re-issues,  retaining  the  covenant  as  to  title,  and,  if 
desired,  insert  the  joint  protective  condition,  same  as  in 
No.  2.)  

No.  5.    Assignment  of  Partial  Undivided  Interest 
by  a  Party  who  is  Himself  an  Assignee. 

(Form  No.  4  will  answer  perfectly  well  for  this  purpose; 
but,  if  it  is  desired  to  set  out  the  chain  of  title,  the  assign- 
ment may  read  as  follows :  — ) 

Whereas  letters-patent  of  the  United  States,  for  improve- 
ments in  plows,  dated  July  5,  1873,  No.  126,789,  were 
granted  to  John  Smith,  who  afterward  assigned  one  undivided 
half  part  thereof  to  William  Williams,  of  Hartford,  Conn., 
the  present  writer :  Now,  for  the  consideration  of  one  dollar, 
the  receipt  whereof  in  full  is  hereby  acknowledged,  I  do 
hereby  assign  to  Charles  Caudle,  of  New-York  City,  one 
undivided  half  part  of  my  said  interest  in  said  patent, —  to 
wit :  one  undivided  fourth  part  of  the  whole  patent, — to  be 
held  and  enjoyed  by  my  said  assignee,  his  heirs  and  assigns, 
to  the  full  end  of  the  term  of  said  patent. 

(Insert  warranty  of  title,  as  in  No.  1.) 

(If  the  assignment  from  John  Smith  to  William  Williams 
contained  the  joint  protective  condition,  insert  the  follow- 
ing:—) 

My  said  assignee  to  take  the  interest  to  him  hereby  con- 
veyed, subject,  so  far  as  his  proportionate  part  of  the  patent 


Manual  of   Patent  Law.  173 


is  concerned,  to  the  provisions  of  the  following  condition, 

which  was  contained  in  said  Smith's  assignment  to  me,  in 

words  as  follows ;  to  wit :  — 

(Here  insert  the  joint  protective  condition  from  No.  2.) 
In  witness  whereof,  I  hereto  set  my  hand  and  seal  as  of 

and  for  the  thirty-first  day  of  March,  A.D.  1874. 

William  Williams,  (ksemht 

(Note.  If  it  is  desired  to  make  an  assignment  extend  to 
any  possible  extension  of  the  patent,  it  may  be  done  by  in- 
serting just  after  the  words  "  term  of  said  patent"  the 
words  "  and  any  extension  thereof."  If  the  interest  con- 
veyed is  subject  to  some  prior  license,  mortgage,  or  other 
incumbrance,  such  incumbrance  should  be  specified  at  the 
end  of  the  covenant  as  to  title,  in  words  substantially  as 
follows:  "except  a  mortgage  for  one  thousand  dollars  to 
Charles  Cady,  of  New-  York  City,  which  said  mortgage  said 
assignee  assumes  and  agrees  to  pay  as  a  part  of  the  consid- 
eration for  this  assignment.") 


No.  5.     Grant  of  a  Territorial  Right.     By  Joint 
Patentees. 

Whereas  letters-patent  of  the  United  States,  for  an  Im- 
proved Process  for  Macerating  Flax,  No.  125,670,  dated 
July  4,  1873,  were  granted  to  James  Johnson,  inventor,  and 
Henry  Harrison,  assignee  of  an  undivided  interest ;  and 

Whereas,  Samuel  Sanborn,  of  New  Haven,  Connecticut,  is 
desirous  of  acquiring  all  the  rights  conferred  by  said  patent 
within  and  for  the  State  of  Connecticut : 

Now,  for  the  consideration  of  one  thousand  dollars,  the 
receipt  whereof  in  full  is  hereby  acknowledged,  we  do 
hereby  grant  a/id  convey  to  said  Sanborn  the  whole  right, 


174  Manual   of   Patent   Law. 


title,  and  interest  in  and  to  said  letters-patent,  in,  to,  and 

for  the  whole  of  the  State  of  Connecticut,  and  in  no  other 

place  or  places. 

(Here  insert  covenant  as  to  title,  as  in  No.  i.) 

In  witness  whereof,  we  have  hereto  set  our  hands  and 

seals,  as  of  and  for  the  first  day  of  April,  A.D.  1874. 

James  Johnson .       <&**/.  &> 


Henry  Harrison.    <&*«/.& 

(Note.  Where  a  machine,  manufacture,  or  composition 
of  matter  forms  the  subject-matter  of  a  patent,  there  should 
be  inserted,  just  after  the  covenant  as  to  title,  a  grantee's 
protective  condition,  as  follows :  — ) 

This  grant  is  made  upon  the  following  express  condition, 

a  willful   infraction  of  which  by  said  grantee,   his  heirs, 

assigns,  grantees,  or  licensees,  shall  work  a  for- 

protectiue     feiture  to  the  present  grantors,  their  heirs  and 

Condition.  •  *»       n        •    %.  j  •  ■  »i  j 

assigns,  of  all  rights  and  privileges  under  or 
relating  to  said  letters-patent  possessed  by  the  person  or 
party  guilty  of  such  infraction ;  to  wit :  Said  grantee,  his 
heirs,  assigns,  grantees,  and  licensees,  shall  not  knowingly 
sell  or  part  with  any  article,  bearing  or  embodying  any 
material  part  of  the  invention  forming  the  subject-matter 
of  said  patent,  which  is  to  be  carried,  sold,  or  used  without 
the  territory  covered  by  this  grant,  and  said  grantee,  his 
heirs,  assigns,  grantees,  and  licensees,  shall  use  their  utmost 
endeavor  to  comply  with  the  spirit  of  this  condition,  and 
to  prevent  any  infraction  thereof;  and  a  gift,  lease,  loan,  or 
sale  of  any  such  patented  article,  to  a  person  or  party  whom 
said  grantee,  his  heirs,  assigns,  grantees,  or  licensees,  being 
such  seller  or  giver,  knows  to  have  once  carried,  or  used,  or 
sold  such  patented  article  without  the  territory  covered  by 


Manual  of  Patent  Law.  175 


this  grant,  in  violation  of  the  spirit  of  this  condition,  shall 
be  conclusive  evidence  of  a  willful  violation  of  this  condi- 
tion on  the  part  of  such  seller  or  giver. 

(Where  the  patented  invention  is  a  process,  the  same 
kind  of  protection  can  be  had  by  a  condition  substantially 
the  same  as  last  given,  providing  that  the  products  of  the 
process  shall  not  be  carried,  sold,  or  used  without  the  terri- 
tory covered  by  the  grant.) 


No.  6.     Mortgage  of  Patent. 

For  the  consideration  of  one  thousand  dollars,  received  to 
my  full  satisfaction  of  Hiram  Henderson,  of  the  city  of  Al- 
bany, in  the  state  of  New-York,  I  do  hereby  assign  and 
mortgage  to  the  said  Henderson  the  whole  right  and  title  to 
letters-patent  of  the  United  States,  No.  26,499,  dated  July 
4,  1867,  for  an  improvement  in  harvesters,  -granted  to  John 
Johnson,  of  Hartford,  Connecticut,  and  by  him  fully  assigned 
to  me. 

(Insert  here  covenant  as  to  title,  as  in  No.  1.) 
The  condition  of  this  assignment  and  mortgage  is  such, 
that,  whereas  I  am  justly  indebted  to  the  said  Hiram  Hen- 
derson in  the  sum  of  one  thousand  dollars,  as  evidenced  by 
my  promissory  note  of  even  date  herewith,  payable  to  said 
mortgagee  or  order  one  year  from  date,  with  interest;  now 
If  said  note  shall  be  well  and  truly  paid,  according  to  its 
tenor,  then  this  assignment  shall  be  null  and  void,  but 
otherwise  to  be  of  full  force  and  effect. 

In  witness  whereof,  I  have  hereto  set  my  hand  and  seal, 
as  of  and  for  the  second  fay  of  April,  A.D.  1874. 

Witnesses:  T  T  J\^>A 

T  7      0. ,       7 ,  lames   la  //sen.     &.w.£> 

John  Sideweu.  J  -  i/<g>v 

George  Smith. 


176  Manual  of   Patent  Law. 


State  of  Connecticut,  County  of  Hartford,  ss. 

On  this  second  day  of  April,  A.D.  18/4,  personally  ap- 
peared James  Jansen,  by  me  known  to  be  the  person  of 
that  name  who  executed  the  foregoing  mortgage,  and  ac- 
knowledged the  execution  of  the  same  to  be  his  free  act 
and  deed.  Before  me, 
n<$x&>  William  W.   Williams, 

A  Notarial^ 

%   SeaL    W  Notary  Public. 


No.  7.     License.     Shop  Right. 

In  consideration  of  five  hundred  dollars,  to  me  in  hand  paid 
by  the  Heigho  Manufacturing  Company,  a  corporation 
of  New-Jersey,  located  in  the  city  of  Trenton,  in  the  state 
of  New-Jersey,  I  do  hereby  license  and  empower  said  com- 
pany to  make  at  a  single  foundery  and  machine-shop  in  said 
Trenton,  and  in  no  other  place  or  places,  the  improvement 
in  harrows,  for  which  letters-patent  of  the  United  States, 
No.  2Q,jy6,  dated  July  5,  1869,  were  granted  to  me,  and 
to  sell  the  same  throughout  the  United  States,  to  the  full 
end  of  the  term  of  said  patent. 

And  I  do  covenant  to  and  with  the  said  company,  that  I 
have  full  right  and  title  to  make  this  license  in  manner  and 

covenant      form   as  above  written,  and  that  there  is  no 

as  to  rule.  prjor  assignment,  grant,  mortgage,  license,  or 
other  conveyance,  under  or  relating  to  said  patent,  that  can 
prevent  said  licensee  from  enjoying  the  privileges  conveyed 
by  this  license  to  the  full  extent  above  given  and  stated. 

In  witness  whereof,  I  have  hereto  set  my  hand  and  seal 
as  of  and  for  the  second  day  of  April,  A.D.  18/4. 

George  G'arvie.     (|w.|> 


Manual  of  Patent  Law.  177 


No.  8.     License  (Shop  Right),  Assignable  and 
Limited. 

In  consideration  oi  Jive  hundred  dollars,  to  me  in  hand  paid 
by  Walter  Walters,  of  New-Haven,  in  the  County  of  New- 
Haven,  and  State  of  Connecticut,  I  do  hereby  license  and 
empower  the  said  Walters,  and  his  assigns,  to  manufacture, 
at  a  single  foundery  and  machine-shop,  the  improved  seed- 
sower,  for  which  letters-patent  of  the  United  States,  No. 
75,603,  dated  December  26,  1870,  were  granted  to  me,  to 
the  number  of  five  hundred  in  each  year,  to  the  full  end 
of  the  term  for  which  said  letters-patent  were  granted,  and 
to  sell  such  seed-sowers  throughout  the  New-England  States. 
(Insert  here  covenant  as  to  title,  the  same  as  in  No.  7.) 
In  witness  whereof,  I  hereto  set  my  hand  and  seal,  as  of 
and  for  the  second  day  of  April,  A.D.  1874. 

Julius  Handy.     <&L/.|) 
No.  9.     License  (Not  Exclusive),  with  Royalty. 

Taken  from  Patent  Office  Forms. 

This  agreement,  made  this  twelfth  day  of  September,  1868, 
between  A.  B.,  party  of  the  first  part,  and  C.  D.  &>  Co., 
party  of  the  second  part,  witnesseth :  that  whereas  letters- 
patent  of  the  United  States  for  an  improvement  in  horse- 
rakes  were  granted  to  the  party  of  the  first  part,  dated 
October  3,  1865 ;  and  whereas  the  party  of  the  second  part 
is  desirous  of  manufacturing  horse-rakes  containing  said 
patented  improvement,  —  now,  therefore,  the  parties  have 
agreed  as  follows: 

I.     The  party  of  the  first  part  hereby  licenses  and  em- 
powers the  party  of  the  second  part  to  manufacture,  subject 
23 


178  Manual  of  Patent  Law. 


to  the  conditions  hereinafter  named,  at  their  factory  in 

( ),  and  in  no  other  place  or  places,  to  the  end  of 

the  term  for  which  said  letters-patent  were  granted,  horse- 
rakes  containing  the  patented  improvements,  and  to  sell 
the  same  within  the  United  States. 

II.  The  party  of  the  second  part  agrees  to  make  full 
and  true  returns  to  the  party  of  the  first  part,  under  oath, 
upon  the  first  days  of  July  and  January  in  each  year,  of 
all  horse-rakes  containing  the  patented  improvements  man- 
ufactured by  them. 

III.  The  party  of  the  second  part  agrees  to  pay  to  the 
party  of  the  first  part  five  dollars,  as  a  license  fee  upon 
every  horse-rake  manufactured  by  said  party  of  the  second 
part,  containing  the  patented  improvements;  provided 
that,  if  the  said  fee  be  paid  upon  the  days  provided  herein 
for  semi-annual  returns,  or  within  ten  days  thereafter,  a 
discount  of  fifty  per  cent  shall  be  made  from  said  fee 
for  prompt  payment. 

IV.  Upon  a  failure  of  the  party  of  the  second  part  to 
make  returns,  or  to  make  payment  of  license  fees  as  herein 
provided,  for  thirty  days  after  the  days  herein  named,  the 
party  of  the  first  part  may  terminate  this  license,  by  serving 
a  written  notice  upon  the  party  of  the  second  part ;  but  the 
party  of  the  second  part  shall  not  thereby  be  discharged 
from  any  liability  to  the  party  of  the  first  part  for  any 
license  fees  due  at  the  time  of  the  service  of  said  notice. 

In  witness  whereof,  the  parties  above  named  (the  said 
Uniontown  Agricultural  Works,  by  its  president)  have  here- 
unto set  their  hands  the  day  and  year  first  above  written. 

A.  B. 

C.  D.  cr>   Co. 


Manual  of  Patent  Law.  179 


No.  10.     License  (Exclusive),  with  Contract  for 
Royalty. 

This  agreement,  made  this  tenth  day  of  June,  1871,  between 
George  B.  Matthewson,  of  Hartford,  Connecticut,  party  of 
the  first  part,  and  The  Excelsior  Iron-works,  a  corporate 
body  under  the  laws  of  said  state,  located  and  doing  business 
at  New-Britain,  in  said  state,  party  of  the  second  part, 
witnesseth : 

That  whereas  letters-patent  of  the  United  States,  were  on 
the  twenty-ninth  day  of  January,  1871,  granted  to  said 
party  of  the  first  part,  for  an  improvement  in  stove-hooks, 
which  said  patented  article  said  party  of  the  second  part  is 
desirous  to  make  and  sell ;  now,  therefore,  the  parties  have 
agreed  as  follows: 

I.  The  party  of  the  first  part  hereby  gives  to  the  party 
of  the  second  part  the  exclusive  right  to  manufacture  and 
sell  said  patented  improvements,  to  the  end  of  the  term  of 
said  patent,  subject  to  the  conditions  hereinafter  named. 

II.  The  party  of  the  second  part  agrees  to  make  full 
and  true  returns,  on  the  first  days  of  January,  April,  July, 
and  October  in  each  year,  of  all  of  said  patented  stove-hooks 
made  by  them  in  the  three  calendar  months  then  last  past ; 
and,  if  said  party  of  the  first  part  shall  not  be  satisfied,  in 
any  respect,  with  any  such  return,  then  he  shall  have  the 
right,  either  by  himself  or  his  attorney,  to  examine  any 
and  all  of  the  books  of  account  of  said  party  of  the  second 
part,  containing  any  items,  charges,  memoranda,  or  inform- 
ation relating  to  the  manufacture  or  sale  of  said  patented 
stove-hooks,  and,  upon  request  made,  said  party  of  the  second 
part  shall  produce  all  such  books  for  said  examination. 

III.  The  party  of  the  second  part  agrees  to  pay  the 
party  of  the  first  part  two  cents  as  a  license  fee  upon  every 


180  Manual  of  Patent  Law 


one  of  said  patented  stove-hooks  made  by  them,  the  whole 
of  said  license  fee  for  each  quarterly  term  of  three  months, 
as  hereinbefore  specified,  to  be  due  and  payable  within 
fifteen  days  after  the  regular  return  day  for  that  quarter. 
And  said  party  of  the  second  part  agrees  to  pay  to  the 
party  of  the  first  part  at  least  fifty  dollars,  as  said  license 
fee,  upon  each  of  said  quarterly  terms,  even  though  they 
should  not  make  enough  of  said  patented  stove-hooks  to 
amount  to  that  sum  at  the  regular  royalty  of  two  cents 
apiece. 

IV.  Said  licensee  shall  cast  or  otherwise  permanently 
place  upon  every  such  stove-hook,  made  under  this  license, 
the  word  "  Matthew  son,1''  and  in  close  relation  thereto  the 
word  "  Patented  "  and  the  date  of  said  patent. 

V.  Said  licensee  shall  not,  during  the  life  of  this 
license,  make  or  sell  any  article  which  can  compete  in 
the  market  with  said  stove-hook. 

VI.  Upon  the  failure  of  said  licensee  to  keep  each  and 
all  of  the  conditions  of  this  license,  said  licensor  may,  at 
his  option,  terminate  this  license,  and  such  termination 
shall  not  release  said  licensee  from  any  liability  due  at  such 
time  to  said  licensor. 

VII.  (Insert  covenant  as  to  title,  as  in  No.  7.) 

In  witness  whereof,  the  above-named  parties  (the  said 
Excelsior  Iron-works,  by  its  President)  have  hereto  set  their 
hands  the  day  and  year  first  above  written. 

George  B.  Matthewson. 

Excelsior  Iron-works, 
By  John  Hartshorn,  President. 

(Note.  It  will  be  observed,  that  under  Form  No.  9,  the 
licensee  is  not  bound  to  make  a  single  one  of  the  patented 


Manual  of   Patent  Law.  181 


articles,  and,  if  he  does  not,  the  patentee  derives  no  profit 
from  the  license.  It  is  not  an  uncommon  thing  for  unscru- 
pulous manufacturers,  with  whose  business  a  new  invention 
would  interfere,  to  get  a  license,  in  substance  like  Form 
No.  9,  except  to  make  it  exclusive,  and  perhaps  leave  out 
the  vacating  clause  at  the  end,  and  then  to  either  never 
make  a  single  one  of  the  patented  articles,  or  to  make  so 
few  as  to  make  it  really  amount  to  the  same  thing.  The 
license  in  Form  No.  10  is  the  one  that  is  recommended; 
for,  under  it,  the  licensee  is  bound  to  pay  a  certain  sum,  as 
royalty,  whether  he  make  a  single  one  of  the  articles  or 
not.) 


No.  ii.     Form  for  Articles  of  Association. 

Articles  of  Association  of  The  Williams  Patent  Steam 
Governor  Manufacturing  Company. 

The  subscribers  hereby  associate  themselves  as  a  body  cor- 
porate and  politic,  under  and  in  pursuance  of  the  provisions 
of  the  statute  laws  of  the  state  of  Connecticut,  authorizing 
and  regulating  the  formation  of  joint-stock  corporations, 
and  they  adopt  the  following  general  articles  of  association 
and  agreement : 

I.  The  name  of  the  corporation  shall  be  The  Williams 
Patent  Steam  Governor  Manufacturing  Company,  and  its 
capital  stock  shall  be  one  hundred  thousand  dollars,  to  be 
divided  into  shares  of  twenty-five  dollars  each. 

II.  The  purpose  for  which  this  said  corporation  is  to  be 
organized  is  to  manufacture  and  sell  the  steam-governor  cov- 
ered by  letters-patent  of  the  United  States,  dated  February  29, 
187 1,  and  numbered  I02,2J2,  issued  to  Chauncey  Williams, 
to  sell  rights  under  said  letters-patent,  and  to  buy  and  sell 


182  Manual  of  Patent  Law. 


and  deal  generally  in  such  real  and  personal  estate  as  may 
be  necessary  and  convenient  in  the  successful  prosecution 
of  said  business. 

III.  The  principal  place  of  business  of  said  corporation 
shall  be  at  Hartford,  in  said  state. 

IV.  Each  subscriber  hereto  agrees  to  take  the  number 
of  shares  in  the  capital  stock  of  said  corporation  set  against 
his  name,  to  be  paid  for  by  installments,  as  called  for  by 
the  directors  hereafter  to  be  appointed. 

V.  It  is  mutually  understood  and  agreed  by  and  between 
the  subscribers  hereto,  that  said  Chauncey  Williams,  or  his 
legal  representatives,  may  subscribe  hereto  for  that  number  of 
shares  whose  par  value  amounts  to  twenty-five  thousand  dol- 
lars, and  that,  when  said  letters-patent  are  fully  assigned  to 
said  corporation,  said  Williams  and  his  legal  representatives 
shall  be  freed  from  any  further  liability  on  account  thereof, 
which  said  allowance,  together  with  ten  thousand  dollars  in 
cash,  which  it  is  agreed  and  understood  shall  be  paid  to 
said  Williams  before  said  corporation  shall  commence  to 
prosecute  said  business,  shall  be  in  full  payment  for  said 
letters-patent  and  the  invention  covered  thereby,  which 
shall  then  become  the  full  and  exclusive  property  of  said 
corporation. 

Dated  Hartford,  Conn. ,  July  4,  i8ji. 


NAMES. 


NO.    OF    SHARES. 


PAR   VALUE. 


(Note.  Upon  such  a  basis  as  this,  the  inventor  can  pro- 
ceed, till  he  secures  the  requisite  subscribers,  after  which  it 
is  advisable  to  follow  the  advice  of  some  local  attorney,  as 
to  giving  notice  of  the  first  meeting  of  the  company,  etc.) 


Manual  of  Patent  Law.  183 


No.  12.     Power  of  Attorney  to  Sell  Rights.     By 
the  Patentee. 

I,  John  Haight,  of  Hartford,  Connecticut,  patentee  and 
owner  of  letters-patent  of  the  United  States,  No.  joo,oot, 
for  an  improvement  in  mouse-traps,  dated  May  25,  1870, 
do  hereby  appoint  Hiram  Handsome,  of  said  Hartford,  my 
attorney,  with  full  power  to  make  assignments,  grants,  or 
licenses  of  any  kind,  under  said  patent,  with  full  power  to 
sign  my  name  to  all  such  instruments,  and  to  receive  and 
receipt  for  all  considerations  received  in  exchange  for  any 
of  said  rights,  but  with  no  power  to  bind  me  in  any  manner 
further  than  to  make  binding  and  legal  all  such  assign- 
ments, grants,  and  licenses. 

This  power  is  in  force  till  a  revocation  in  writing  shall  be 
duly  recorded  upon  the  records  of  the  United  States  Patent 
Office,  where  this  power  of  attorney  will  be  found  duly  re- 
corded. 

Witness  my  hand  this  fourteent/i  day  of  June,  A.D.  i8ji. 

Witnesses  : 

Charles  Hawser.  John  Haight. 

Henry  Cable. 

(Note.  It  will  be  observed  that  the  foregoing  power 
gives  to  the  attorney,  while  the  power  is  unrevoked,  as  full 
power  over  the  patent  as  the  owner  has,  and  makes  no  pro- 
vision for  insuring  that  the  owner  shall  know  of  the  terms 
of  each  sale,  or  for  the  safety  of  the  funds  received.  Al- 
though it  is  a  common  form,  it  can  not  be  recommended. 
The  following  is  the  form  that  is  recommended :  — 


184  Manual   of   Patent   Law. 


No.  13.     Power  of  Attorney,  with  Restrictions. 
By  the  Assignees  of  Entire  Right. 

We,  William  Noble  and  Hugh  Ransom,  of  Hartford,  Con- 
necticut, assignees  and  owners  of  the  entire  right  in  and  to 
letters-patent  of  the  United  States,  No.  100,066,  for  an 
improvement  in  garden  hoes,  dated  May  24, 1873,  do  hereby 
appoint  Robert  Roberts,  of  said  Hartford,  our  attorney, 
with  full  power  to  make  assignments,  grants,  or  licenses  of 
any  kind,  under  said  patent,  with  full  power  to  sign  our 
names  to  all  such  instruments,  and  to  receive  and  receipt 
for,  in  our  name,  all  considerations  received  in  exchange 
for  any  of  said  rights,  but  with  no  power  to  bind  us,  or 
either  of  us,  further  than  to  make  binding  all  such  assign- 
ments, grants,  and  licenses ;  he  to  exercise  all  power  herein 
conferred  under  the  following  conditions,  without  which  no 
act  of  his  under  this  authority  shall  be  valid : 

I.     He  shall  sell  at  not  less  than  the  following  prices : 

For  the  whole  patent,  twenty  thousand  dollars  ; 

For  any  state,  such  part  of  twenty  thousand  dollars  as  the 
population  of  the  state  in  question  bears  ratio  to  the  whole 
population  of  the  United  States, —  this  result  to  be  doubled 
to  find  the  price  for  said  state ; 

For  any  county,  such  part  of  the  price  for  the  state,  as 
determined  by  the  foregoing  directions,  as  the  population 
of  the  said  county  bears  ratio  to  the  population  of  the  state, 
—  this  result  to  be  doubled  to  find  the  value  of  said  county; 

For  any  town,  such  part  of  the  price  of  the  county  in 
which  it  is  situated,  determined  as  hereinbefore  directed, 
as  the  population  of  the  town  bears  ratio  to  the  population 
of  the  county, —  this  result  to  be  doubled  to  find  the  value 
of  said  town. 


Manual  of  Patent  Law.  185 


All  sales  of  licenses,  and  all  territorial  sales  at  less  than 
the  prices  given  above,  to  be  subject  to  our  approval  by- 
letter  or  telegram. 

II.  All  payments  for  rights  thus  sold  shall  be  made 
either  in  cash  wholly,  or  in  not  less  than  one-half  cash  and 
one-half  in  good  promissory  notes,  to  mature  within  six 
months  from  day  of  sale,  and  either  signed  or  indorsed  by 
a  person  or  persons  of  ample  pecuniary  responsibility.  All 
such  cash  shall  be  deposited  by  the  payer  thereof  with  the 
nearest  bank  or  responsible  private  banker,  payable  to  the 
joint  order  of  our  said  attorney  and  ourselves,  and  all  such 
promissory  notes  shall  be  made  in  three  notes  of  equal 
amount,  payable  to  the  joint  order  of  ourselves  and  our 
said  attorney,  and  delivered  to  him.  Any  payment  afore- 
said in  anywise  deviating  from  these  provisions,  to  be  sub- 
ject to  our  approval  by  letter  or  telegram. 

This  power  shall  remain  in  force  till  a  written  revocation 
thereof  shall  be  recorded  on  the  records  of  the  Patent  Office 
of  the  United  States,  where  this  power  will  be  found  re- 
corded. 

Witness  our  hands,  this  tenth  day  of  June,  A.D.  187 1. 

Witnesses  : 

Samuel  Simmons.  William  Noble. 

Thomas  Tompkins.  Hugh  Ransom. 

(The  reader  is,  probably,  not  artless  enough  to  need  the 
suggestion,  that  it  is  well  to  put  the  stated  price  in  the 
power  high  enough  to  allow  the  agent  to  fall  sensibly  there- 
from, and  yet  get  a  fair  price.  There  is  nothing  that  will 
incite  a  person  to  buy  an  article  so  much  as  to  think  he  is 
getting  it  much  below  its  real  value.) 


24 


186  Manual  of  Patent  Law 


No.  14.     Private  Agreement  to  Accompany 
Power  of  Attorney. 

This  agreement,  made  this  tenth  day  of  June,  1874,  be- 
tween William  Noble  and  Hugh  Ransom,  party  of  the  first 
part,  and  Robert  Roberts,  party  of  the  second  part,  all  of 
Hartford,  Connecticut,  witnesseth: 

I.  That  the  party  of  the  second  part  agrees  to  use  his 
best  endeavors  to  sell  rights  under  letters-patent  No.  100,066, 
dated  May  24,  1871,  for  the  party  of  the  first  part,  under 
the  terms  and  conditions  of  a  power  of  attorney  of  even 
date  herewith,  from  the  party  of  the  first  part  to  the  party 
of  the  second  part;  such  endeavors  to  continue  until  said 
power  of  attorney  is  revoked,  or  until  the  party  of  the 
second  part  notifies  the  party  of  the  first  part,  in 
writing,  that  he  no  longer  wishes  to  be  bound  by  this 
agreement. 

II.  The  party  of  the  first  part  agrees  to  pay  to  the  party 
of  the  second  part  one-third  part  of  all  the  proceeds  from 
said  sales,  as  remuneration  for  his  services  in  this  behalf, 
and  this  remuneration  shall  be  due  and  payable  from  cash 
received,  as  soon  as  deposited  as  provided  in  said  power  of 
attorney,  and  from  promissory  notes  received,  as  soon  as 
the  same  are  delivered  to  the  party  of  the  second  part,  the 
party  of  the  second  part  to  retain  as  his  property  one  of  the 
three  said  equal  promissory  notes,  and  to  immediately  for- 
ward the  other  two  to  the  party  of  the  first  part.  This 
allowance  to  be  in  full  of  all  charges  whatsoever  in  this 
behalf  against  the  party  of  the  first  part;  and  the  said 
party  of  the  second  part  is  to  bear  his  own  expenses,  of 
whatever  nature. 


Manual  of  Patent  Law.  187 


In  witness  whereof,  the  said  parties  have  hereto  set  their 
hands  this  te?ith  day  of  June,  A.D.  187 1. 

witnesses.-  William  Noble. 

Samuel  Simmons.  Hugh  Ransom. 

Thomas  Tompkins.  Robert  Roberts. 

(Both  parties  should  have  one  of  these  agreements,  which 
should  be  made  in  duplicate  for  that  purpose.  Of  course, 
this  agreement  is  for  nothing  but  private  use,  and  is  not  to 
be  shown  generally.) 


No.  15.     Revocation  of  Power  of  Attorney. 

Having,  on  the  tenth  day  of  June,  187 1,  appointed  Robert 
Roberts,  of  Hartford,  Connecticut,  our  attorney  to  sell  rights 
under  letters-patent  No.  100,066,  dated  May  24,  187 1,  for 
us,  we  do  hereby  revoke  said  power  of  attorney  to  him,  and 
declare  his  authority  to  act  for  us  in  any  manner  to  be  at 
an  end. 

Witness  our  hands,  this  fourth  day  of  July,  A.D.  187 1, 
at  Hartford,  Connecticut. 

wittiesses:  William  Noble. 

Samuel  Simmons.  Hugh  Ransom. 

Thomas  Tompkins. 


No.  16.     Power  of  Attorney  to  Sell  Rights, 
C.O.D. 

I,  George  Grant,  of  Bridgeport,  Connecticut,  owner  of  letters- 
patent  of  the  United  States,  No.  iJS,S4S>  dated  February 
jo,  1873,  hereby  authorize  Lucius  Lewis,  of  said  Bridge- 


Manual  of  Patent  Law. 


port,  to  sell  assignments,  grants,  and  licenses  under  said 
patent,  such  sales  to  be  approved  by  me  before  becoming 
valid,  upon  which  approval,  in  each  case,  I  will  send 
the  necessary  assignment,  grant,  or  license,  duly  executed 
by  me,  by  express  to  said  Lewis,  accompanied  with  instruc- 
tions to  the  carrier  to  allow  said  Lewis,  and  the  buyer  or 
buyers  of  any  such  right,  to  examine  such  conveyance,  and 
upon  delivery  of  the  same,  to  collect  for  return  to  me  such 
money,  notes,  or  articles  as  I  am  to  receive  in  consideration 
of  such  sale. 

Signed  and  sealed  by  me,  this  thirty-first  day  of  June, 
A.D.  1873. 

George  Grant.    Ssen/.h 

(All  powers  of  attorney  to  sell  rights,  and  all  revocations 
thereof,  should  be  recorded  at  the  Patent  Office,  so  that 
buyers  may  have  full  notice  of  a  revocation,  and  be  pro- 
tected thereagainst.  Notwithstanding  the  provision  in  the 
power  of  attorney  that  the  attorney  shall  only  sell  for  cash 
and  notes,  it  is  well  to  agree  verbally  that  he  may  sell  for 
real  estate,  subject,  of  course,  to  approval  by  letter  or  tele- 
gram; and,  when  this  is  done,  the  deed  for  the  same  can 
be  made  to  the  joint  names  of  the  owner  or  owners  of  the 
patent  and  the  attorney,  and  the  land  can  afterward  be 
divided,  if  not  satisfactorily  sold  for  cash,  allowing  the 
attorney  one-third,  as  in  other  cases.  If  articles  of  per- 
sonal property, — as  produce,  horses,  diamonds,  etc., — are 
offered  in  exchange  for  rights,  it  is  best  to  take  them,  and 
then  sell  them  for  cash.) 

(Note.  'An  assignment,  grant,  or  license,  made  by  an 
agent,  reads  precisely  the  same  as  when  made  by  his  prin- 
cipal, but  is  signed  with  the  name  of  the  principal    "  by 


Manual  of  Patent  Law.  189 


his  attorney."  That  is,  supposing  the  name  of  the  owner 
of  the  patent  to  be  George  Case  and  that  of  the  agent  to  be 
Samuel  Smith,  the  instrument  would  be  signed : 

George  Case, 
By  his  attorney.  Samuel  Smith.) 


No.  17.     Contract  for  Future  Grant. 

Whereas  letters-patent  of  the  United  States,  for  improve- 
ments in  ox-yokes,  No.  49,695,  dated  May  6,  1869,  were 
issued  and  granted  to  Isaac  Johnson;  and  whereas,  Henry 
Henderson,  of  Chicago,  Illinois,  desires  to  acquire  all  the 
rights  granted  by  said  letters-patent  within  the  State  of  Illi- 
nois :  Now,  in  consideration  of  the  present  payment  to  me 
of  five  hundred  dollars  in  current  funds,  and  in  further 
consideration  of  the  delivery  to  me  of  three  promissory 
notes  of  even  date  herewith  for  five  hundred  dollars  each, 
made  and  signed  by  the  said  Henderson,  payable  to  my 
order,  one  due  three  months  from  date,  one  due  six  months 
from  date,  and  one  due  nine  months  from  date,  —  all  with 
interest : 

I,  the  said  Isaac  Johnson  do  hereby  grant  to  the  said 
Henderson,  but  not  to  his  assigns,  for  the  term  of  nine 
months  from  the  date  hereof,  the  exclusive  license  to  make, 
to  use,  and  to  vend  to  others  to  use,  within  said  State  of 
Illinois,  the  articles  forming  the  subject-matter  of  said 
letters-patent;  provided,  that  if  either  of  the  two  notes, 
coming  due  at  three  and  six  months  respectively,  shall  not 
be  paid  at  maturity,  then,  when  said  default  of  payment  is 
made,  this  license  shall  immediately  determine,  without 
notice  or  action  on  my  part ; 


190  Manual  of   Patent   Law. 


But,  if  payment  of  each  and  all  of  the  said  three  notes 
shall  be  made  at  the  time  of  their  maturity,  then,  by  such 
payment,  the  said  Henderson  shall  become  the  sole  owner 
of  each  and  all  of  the  privileges  and  rights  granted  and 
secured  by  said  patent,  within  and  for  the  whole  of  the 
State  of  Illinois,  without  further  action  on  my  part. 

And  I  covenant  and  ,agree,  that,  when  all  three  of  said 
notes  are  fully  paid  at  maturity,  I  will  execute  and  deliver 
to  said  Henderson  a  full  and  complete  grant  and  transfer  of 
the  whole  interest  in  said  patent,  within  and  for  the  State 
of  Illinois;  and  I  hereby  make  this  agreement  a  lien  and 
mortgage  upon  said  interest  in  said  patent  for  the  faithful 
performance  of  my  contract  herein  contained. 

(Insert  here  covenant  of  title,  as  in  No.  1.) 

In  witness  whereof,  I  hereto  set  my  hand  and  seal,  this 
eighth  day  of  June,  A.D.  1874. 

Isaac  Johnson, 

By  Atnos  Ames,  Agent. 


Practical  Suggestions 

ON 

The  Sale  of  Patents. 


Entered  according  to  Act  of  Congress,  in  the  year  1871,  by 

William  Edgar  Simonds, 
in  the  Office  of  the  Librarian  of  Congress  at  Washington. 


PRACTICAL  SUGGESTIONS 

ON 

THE  SALE  OF  PATENTS 


IN  GENERAL. 

Having  made  a  really  meritorious  invention,  and  having 
secured  a  patent  thereupon,  the  inventor,  who  would  sell 
his  patent,  has  a  delicate  and  often  difficult  task  before  him. 
All  along  till  now,  —  from  the  first  crude  conception  of  the 
invention,  on  through  its  various  stages  of  trial  and  experi- 
ment, till  the  device  stands  forth  completed,  and  yet  on 
through  the  ordeal  of  the  Patent  Office,  till  its  parchment, 
ribbon,  and  seal  assure  the  inventor  of  its  protection,  —  he 
is  usually  sustained  by  an  earnest  enthusiasm.  In  a  sort  of 
vague  way,  it  has,  all  along,  seemed  to  him  that,  when  his 
patent  should  issue,  his  labors  would  be  done,  and  he  would 
thenceforth  rest  on  his  well-earned  laurels.  Not  that  the 
situation  has  thus  stood  forth  in  his  mind,  clearly  and 
sharply  defined,  for  it  rarely  occurs  to  an  inventor  to 
seriously  consider  upon  what  will  be  the  state  of  affairs 
at  this  juncture,  till  the  progress  of  events  brings  him  to 
it ;  but  the  cloud  which  hovered  over  this  bit  of  promised 
land  roughly  assumed  this  shape. 

When  the  inventor  has  finally  received  his  patent,  and 
read  and  re-read  it  some  dozens  of  times,  it  begins  to  occur 

25 


194  The   Sale   of   Patents. 


to  him  that  he  will  just  thrust  in  his  sickle  and  reap  a  little 
of  the  golden  harvest,  which  imagination,  has  all  along, 
been  sowing  for  him.  Plainly,  he  looks  around  for  a  pur- 
chaser, and  with  a  kind  of  astonishment,  waking  up,  as  it 
were,  from  a  dream,  he  finds  that  purchasers  do  not  stand 
around  ready  to  exchange  their  lucre  for  his  invention. 
Generally  unaccustomed  to  the  ways  of  business  and  of 
business  men,  he  finds  himself,  in  a  short  time,  as  helpless 
in  his  endeavors  as  can  well  be  imagined.  He  does  not 
know  what  class  of  men  will  be  most  likely  to  take  an 
interest  in  his  invention,  nor  how  to  reach  them,  nor  what 
to  say  to  them.  Not  rarely,  after  a  year  or  so  of  this  blind 
groping,  disgust  with  the  whole  thing  sets  in,  and  the 
inventor  renounces  this  and  all  other  inventions  forever. 

This  has  been  the  experience,  over  and  over  again,  of 
thousands  upon  thousands  of  inventors;  and,  in  multitudes 
of  cases,  where  a  purchaser  has  been  found,  the  invention 
has  been  sold  to  him  for  a  song,  and  the  buyer,  applying 
business  principles  to  the  management  of  the  invention, 
has  realized  the  lion's  share  of  the  money  from  it. 

The  Patent  Office  Reports  are  full  of  useful  devices, 
which  have  never  been  introduced  into  the  markets  of 
trade,  and  which,  it  is  easy  to  say,  would  have  netted  their 
inventors  considerable  sums  of  money,  if  they  had  been 
properly  brought  out  in  their  time. 

It  is  partly  with  the  purpose  of  indicating  to  this  class 
of  inventors  to  whom  they  should  present  their  patents  for 
sale,  and  how  to  present  them,  that  this  work  has  been 
projected. 

It  must  not  be  supposed  that  all  inventions  are  salable, 
or  that  the  directions  hereinafter  contained  are  infallible. 
Some  inventions  are  very  far  from  being  improvements; 
for,   though  they  may  be   very  ingenious,    yet   they   are 


The   Sale  of  Patents.  195 


neither  simpler,  more  efficient,  nor  cheaper  than  the  com- 
mon devices  in  use  for  the  same  purpose,  and  consequently 
there  is  no  money  in  them.  Such  inventions  may  some- 
times be  sold  to  men  with  more  money  than  good  judg- 
ment ;  yet  the  cases  where  this  can  occur  are  so  few,  that  it 
is  not  worth  while  to  place  any  dependence  upon  them. 

It  is,  however,  believed  that  a  person  will  rarely  fail  to 
dispose  of  an  invention  of  any  merit,  if  he  takes  the  pains 
to  understand  and  intelligently  act  upon  the  suggestions 
hereinafter  contained. 

Patentees  must  not  be  too  easily  discouraged  in  their 
efforts  to  make  sales,  for  inventions  which  are  really  im- 
provements have  a  financial  value  just  as  real  as  that  of  a 
farm  or  of  any  article  of  trade;  and,  in  the  hands  of 
patent  salesmen  of  skill  and  experience,  money  is  realized 
from  patents  with  greater  rapidity  than  in  almost  any  other 
legitimate  business. 


PATENT  BROKERS  AND  PATENT 
SWINDLERS. 

Almost,  if  not  quite,  every  issue  of  various  scientific  and 
mechanical  publications  contains  the  advertisements  of 
parties  who  hold  themselves  out  as  making  a  business 
of  buying  and  selling  patents,  almost  always  "  strictly 
on  commission."  The  following,  omitting  names  and  lo- 
calities, is  the  actual  advertisement  of  such  a  party,  as 
it  appeared  from  week  to  week :  — 

TDATENT-RIGHTS  SOLD  ON  COMMISSION— And  valuable  inventions 

-L      introduced,  by  the  most  experienced  patent  salesmen  in  the  Union 

No  charge  for  our  services  unless  successful,  etc. 


196  The   Sale  of   Patents. 


This  is  a  fair  sample  of  a  whole  class  of  advertisements. 
A  letter  of  inquiry,  addressed  to  one  of  these  advertisers, 
elicited  the  following  reply :  — 

Dear  Sir, —Your  favor  of  the  2d  at  hand.    We  charge  from  $50  to  $250  for 
expenses  of  negotiating  patents,  and  ten  to  fifteen  per  cent  for  commission. 
Yours  truly,  

A  letter  sent  to  another  elicited  the  following  reply :  — 

Dear  Sir,— Your  favor  of  the  7th  is  received.  We  have  been  so  taken  up 
with  other  matters,  have  scarcely  had  time  to  reply.  Our  terms  require  the 
patentee  to  furnish  $100  with  which  to  advertise  his  patent,  furnish  one 
perfect  model  or  drawing,  and  allow  us  forty-five  days  within  which  to  make 
the  sale,  etc.,  etc.  Yours  respectfully, 

Similar  answers  were  received  to  letters  written  to  others 
of  these  brokers.  These  answers  were  invariably  accom- 
panied by  circulars  describing,  in  glowing  terms,  the  ad- 
vantages the  senders  were  able  to  offer.  There  was  a 
striking  similarity  among  these  circulars,  and,  in  one  case, 
two  were  found,  parts  of  which  were  identically  the  same, 
word  for  word,  although  they  issued  from  offices  more  than 
a  thousand  miles  apart. 

It  will  be  observed  that  these  patent  brokers  always  adver- 
tise to  sell  on  commission.  Their  letters  and  circulars  disclose 
that  there  is  always  an  advance  fee,  varying  from  twenty-five 
to  two  hundred  and  fifty  dollars,  which  can  hardly  be  said 
to  be  in  conformity  with  the  terms  of  the  advertisements. 
Commission-houses  engaged  in  the  sale  of  other  articles 
always  pay  their  own  expenses,  and  not  infrequently  ad- 
vance money  upon  goods  consigned  to  them,  before  they 
are  sold.  For  a  patent  broker  to  first  advertise  to  sell 
patents  on  commission,  and  then,  afterward,  to  charge  an 
advance  fee,  ought,  at  least,  to  subject  him  to  suspicion. 

Another  thing:  it  is  difficult  to  see  what  advantages  a 
patent  broker  can  have  over  the  patentee,  if  the  latter 


The   Sale   of   Patents.  197 


is  once  made  acquainted  with  the  way  to  reach'  probable 
customers.  The  broker  certainly  can  not  understand  the 
nature  of  the  invention  better  than  the  inventor;  and,  be- 
sides, as  the  buyer  well  knows  that  the  broker  must  have  a 
large  commission  from  the  price  realized,  he  has  an  incen- 
tive to  buy  from  the  inventor,  and  save  this  commission. 

The  broker  will  probably  claim,  — 

First,  —  That,  by  education  and  experience,  he  is  better 
qualified  than  inventors  in  general,  to  set  forth  the  advan- 
tages of  the  invention,  and  the  profits  to  be  derived  there- 
from ;  and, 

Second,  —  That  he  keeps  an  open  office,  at  a  settled 
place,  where  a  person  seeking  investments  in  patents  may 
come,  examine,  and  select. 

To  the  first  argument,  it  may  be  replied,  that  the  ability 
to  well  set  forth  the  advantages  of  an  invention  is  not 
necessarily  incident  to  the  occupation  of  a  patent  broker ; 
and,  to  the  second  argument,  it  may  be  replied,  that  the 
legitimate  market  for  inventions  is  found  among  those  who 
are  engaged  in  manufacturing  or  selling  articles  akin  to  the 
invention  on  sale,  and  that  this  class  of  men  will,  as  a 
rule,  display  their  usual  shrewdness,  and  much  prefer  to 
deal  with  the  inventor  at  first  hand,  and  thus  save  the 
heavy  commission  which  they  well  know  the  broker  must 
receive. 

The  sum  of  money  which  these  brokers  require  as  an 
advance  fee  will,  in  most  cases,  pay  all  the  expense  of  pre- 
senting an  invention  to  all  that  class  of  persons  who  will  be 
likely  to  buy  it,  which  is  all  that  the  brokers  will  promise 
to  do,  and  the  invention  is,  meanwhile,  entirely  within  the 
control  of  the  inventor. 

These  remarks  are  based  upon  the  supposition  that  the 
advance  fee  paid  to  the  broker  is  wholly  and  honestly 


198  The   Sale   of   Patents. 


appropriated  for  advertising,  etc.,  about  which  a  person  is 
justified  in  entertaining  grave  doubts.  At  any  rate,  it  is 
better  for  the  inventor  to  wait  till  he  has  exhausted  all  the 
unequivocal  resources  at  command,  before  resorting  to 
patent  brokers  who  charge  an  advance  fee. 

Patent  Swindlers.  Inventors  seem  to  be  the  favorite 
prey  of  a  certain  kind  of  swindlers.  First  they  hail  from 
a  small  town  in  Michigan,  next  from  Philadelphia,  then 
from  Chicago,  then  from  Nashville,  and  so  on  through 
a  long  and  dreary  catalogue.  They  send  out  circulars  to 
inventors,  describing  their  offices,  their  salesmen,  and  their 
facilities,  and  invite  patronage,  always  remembering  to 
charge  a  paltry  advance  fee  of  three  or  five  dollars,  and 
giving  some  specious  reason  for  making  the  charge. 

Advertisers  of  this  kind  are  always  arrant  swindlers: 
they  never  make  the  slightest  attempt  to  dispose  of  a 
patent.  One  Michigan  concern  kept  on  at  this  business 
till  they  had  accumulated  hundreds,  if  not  thousands,  of 
models,  which  they  tumbled  into  closets,  chuckling,  no 
doubt,  meanwhile,  in  wicked  glee  at  the  verdancy  of  their 
victims.     But  the  law  at  length  hunted  them  out. 


PRELIMINARY    TO    UNDERTAKING 
SALES. 

Models.  It  is  absolutely  necessary,  in  offering  a  pat- 
ented invention  for  sale,  to  have  one  or  more  perfect 
working  models.  If  the  invention  is  a  machine,  and  not 
too  large  and  costly,  and  it  is  within  the  inventor's  means, 


The   Sale   of   Patents.  199 


he  should  construct,  or  have  constructed,  at  least  one  full- 
sized  machine  that  will  work  to  perfection.  If,  beyond 
question,  the  machine  is  too  costly  to  allow  of  the  invent- 
or's building  one,  then  he  should  have,  in  its  place, 
complete,  artistic  drawings,  in  elevation,  plan,  and  detail. 

In  making  a  model,  it  is  not  enough  to  construct  a  rude 
device,  which,  in  a  halting  and  awkward  way,  will  illustrate 
the  principle  of  the  improvement.  The  machine  should  be 
most  carefully  and  perfectly  made.  The  mass  of  minds 
will  much  more  readily  understand  and  appreciate  the 
principle  of  the  machine,  if  the  mechanical  execution  is 
perfect.  Whatever  the  after-made  machines  may  be,  the 
first  one  should  be  as  near  perfect  as  possible.  The  inventor 
will  usually  find  that,  at  his  best,  he  will  have  enough  to 
apologize  for,  without  being  responsible  for  poor  workman- 
ship. It  is  much  easier  to  interest  a  crowd  in  a  fine  piece 
of  mechanism,  even  if  the  device  be  old,  than  in  a  new 
but  roughly  made  invention.  The  tea,  coffee,  and  spice 
merchants  understand  this,  and  take  advantage  of  it,  when 
they  put  in  their  windows  handsome  specimens  of  small 
steam-engines,  which  are  supposed  to  be  always  grinding 
fragrant  Mocha  and  old  Java,  the  merchants  well  knowing 
that  half  the  people  who  go  by  will  take  a  look  at  the 
polished  and  painted  machinery,  and  will  thereby  be  drawn 
to  look  at  their  merchandise. 

If  the  invention  is  a  small  article,  as  a  shirt-stud,  a 
mouse-trap,  a  toy,  or  a  clothes-line  holder,  it  is  best  for 
the  inventor  to  have  quite  a  number  made,  that  he  may 
send  samples  to  those  who  may  become  interested  in  the 
invention,  if  it  should  be  found  desirable.  If  the  inven- 
tion is  a  new  compound  or  a  new  process,  the  inventor 
must  provide  materials,  etc.,  for  explaining  and  illustrating 
the  process,  or  the  effects  of  the  new  compound. 


2oo  The   Sale   of   Patents. 


First  Cost.  Another  necessity,  in  offering  a  patent 
for  sale,  is  to  be  able  to  show  just  what  the  first  cost  of  the 
article  is.  If  the  invention  is  some  complicated  and  costly 
machine,  the  inventor  must  show,  either  from  his  own 
knowledge  or  the  calculations  of  some  competent  person, 
what  is  its  first  cost.  A  competent  person  would  be  a  civil 
or  mechanical  engineer,  or  a  machinist  or  other  mechanic 
of  experience  in  constructing  other  machines  of  the  same 
general  nature.  If  a  responsible  party  can  be  found,  who 
will  agree  to  furnish  the  machine  well  made  for  some 
certain  sum  apiece,  this  is  an  important  item  to  be  had. 

If  the  invention  is  some  small  device,  and  not  costly, 
the  inventor  should  have  some  dozens  (or,  better  still,  a 
few  hundreds)  of  them  made,  so  as  to  get  at  the  exact  first 
cost-  To  find  a  responsible  party  who  will  undertake  to 
make  the  articles  for  a  certain  sum  per  hundred,  per  gross, 
or  per  thousand,  is  also  important  here.  The  difference 
of  two  or  three  cents  in  the  first  cost  of  small  articles 
of  general  use,  often  determines  who  shall  command  the 
market;  in  other  words,  who  shall  make  money  from  the 
manufacture,  and  who  shall  lose. 

If  the  invention  is  a  new  process,  the  inventor  must  be 
amply  prepared  to  show  the  cost  of  his  process,  as  compared 
with  that  in  common  use  for  the  same  or  similar  purposes. 

The  Profit.  The  profit  made  on  a  single  article  is,  of 
course,  the  difference  between  the  first  cost  and  the  retail 
price  at  which  it  is  finally  sold  to  the  consumer.  To  deter- 
mine the  amount  of  this  profit  upon  a  new  invention,  is  a 
necessary  thing,  before  offering  it  for  sale.  The  whole 
profit  is  divided  into  three  and  sometimes  four  parts ;  to  wit : 
the  manufacturer's  profit,  the  wholesale  dealer's  profit,  and 
the  retail  dealer's  profit.     The  manufacturer  sells  to  the 


The   Sale   of   Patents.  201 


wholesale  dealer,  the  wholesale  dealer  to  the  retail  dealer, 
and  he  to  the  consumer.  There  is,  sometimes,  intermediate 
between  the  manufacturer  and  wholesale  dealer,  the  jobber; 
but  the  writer  fails  to  see  the  use  of  such  an  intermediate, 
and,  if  he  is  made  use  of,  his  profit  should  be  a  percentage 
on  the  profit  of  the  manufacturer,  —  so  that,  in  making  the 
division  of  profits,  it  is  not  necessary  to  consider  the  jobber 
at  all.  The  retail  price  of  the  article  should  be  fixed  as 
low  as  is  commensurate  with  the  allowance  of  fair  profits  to 
each  of  these  parties.  If  the  invention  is  an  improvement 
upon  an  article  in  common  use,  —  as,  for  instance,  a  flat- 
iron, —  and  the  first  cost  of  the  article  is  not  greater  than 
the  first  cost  of  the  common  article,  then  it  is  probably 
best  to  adopt  just  the  scale  of  profits  which  obtains  in  the 
trade  with  regard  to  the  common  article.  An  inquiry  put 
to  a  friendly  dealer  in  the  articles  upon  which  the  invention 
is  an  improvement,  will  elicit  what  these  profits  are.  If  the 
first  cost  is  somewhat  greater,  then  the  retail  price  should  be 
correspondingly  advanced,  the  scale  of  profits  being  kept  at 
about  the  same  ratio  of  correspondence.  If  the  first  cost 
is  less  than  that  of  the  common  article,  it  is  probably 
advisable  to  keep  the  retail  price  up  to  that  of  the  common 
article,  and  thus  give  larger  profits. 

There  is  no  general  correspondence  of  profits  to  these 
three  parties,  on  different  articles.  The  profits  on  different 
manufactures  differ  widely,  and  with  no  reference  whatever 
to  a  common  standard.  The  only  rule  that  can  be  given, 
in  this  regard,  is,  to  ascertain  the  scale  of  prices  and  profits 
which  prevail  from  the  manufacturer  to  the  consumer,  in 
the  trade,  upon  articles  which  are  nearest  like  the  invention 
under  consideration,  and  then  to  assimilate,  as  far  as  possi- 
ble, the  profits  upon  the  new  article  to  this  scale,  varying, 
however,  as  any  good  reason  may  dictate.  If  the  invention 
26 


2o2  The   Sale   of   Patents. 


is  a  new  process,  the  inventor  must  be  prepared  to  show  the 
gain  in  using  the  new  process,  as  compared  with  the  old. 
and  the  increased  profit  secured  thereby.  The  same  is  true, 
if  the  invention  is  a  new  machine  for  producing  an  old 
article,  as,  for  instance,  drain-tile. 

The  Market.  Having  ascertained  the  first  cost  of  pro- 
ducing the  article  invented,  and  having  fixed  upon  the 
profit  to  be  derived  from  a  single  article,  the  next  step  is  to 
inquire  how  extensive  a  market  is  offered  to  the  invention. 
If  it  is  an  invention  useful  to  both  sexes,  to  children  and 
adults  alike,  it  will  have  for  a  market  the  whole  population 
of  the  United  States,  —  over  thirty-eight  millions  of  souls. 
If  useful  to  adult  males  only,  the  market  will  be  about  one- 
fourth  of  this  number.  This  thirty-eight  millions  of  popu- 
lation is  composed,  roughly,  of  males  and  females  in  about 
equal  proportions,  and  each  of  these  divisions  is  composed 
of  about  one-half  adults  and  one-half  children ;  so  that,  if 
the  invention  appeals  to  persons  irrespective  of  their  avoca- 
tions, the  market  for  it  is  readily  computed.'  If  the  inven- 
tion is  one  which  will  be  useful  in  every  family,  the  market 
will  be  about  one-fifth  the  whole  number  of  souls,  as,  on  an 
average,  there  are  about  five  persons  in  a  family. 

The  full  census  report  for  1870  contains  such  full  statistics 
of  the  different  trades,  professions,  and  callings  of  the 
people  of  the  United  States,  that  there  can  be  readily 
gathered  from  it  how  many  there  are  of  any  class  or 
classes  of  persons  to  whom  an  invention  may  be  of  partic- 
ular utility,  and  the  whole  of  such  class  or  classes  will 
constitute  the  market  for  the  invention. 

Instead  of  being  directly  useful  to  any  class  of  persons, 
an  invention  may  be  an  improvement  in  the  manufacture 
of  some  article,  —  as  flour-barrels,  for  instance,  —  and  then 


The   Sale  of   Patents.  203 


it  is  necessary  to  ascertain  the  actual  annual  production 
of  this  article  in  the  country;  or,  it  may  be  an  improved 
process,  say  of  smelting  iron,  and  then  it  is  necessary  to 
find  how  many  tons  of  iron  are  annually  smelted.  The 
census  of  1870  is  a  great  aid  in  ascertaining  most,  if  not 
all,  of  this  information;  but,  when  it  is  deficient,  the 
librarian  of  almost  any  public  library  can  direct  an  in- 
ventor where  to  find  the  desired  statistics.  The  wants 
which  inventions  are  designed  to  fill  are  so  various,  and 
the  statistics  which  would  answer  all  such  inquiries  fill  so 
many  pages,  that  it  is  impracticable  to  more  than  direct,  in 
this  book,  as  to  what  information  is  needed. 

One  element  which  must  be  taken  into  account  in  deter- 
mining the  extent  of  the  market  for  a  new  invention,  if  it 
is  an  article  and  not  a  process,  is  its  durability.  If  the 
article,  when  once  sold  to  the  consumer,  will  last  him  for 
ten  years,  of  course  the  market  for  that  article  is  not  so 
large  as  it  would  be,  if,  in  the  natural  course  of  things, 
it  would  last  but  a  short  time,  and  then  would  require  to  be 
renewed.  Having  ascertained  the  extent  of  the  market  for 
a  new  invention,  the  gross  profit  to  be  derived  from  it  can 
be  readily  computed,  by  multiplying  the  profit  upon  a  single 
article  by  the  whole  number  which  may  probably  be  sold. 

Capital  Required.  If  the  amount  of  capital  required 
to  develop  an  invention,  and  introduce  it  to  the  public,  is 
small,  this  will  be  an  additional  argument  to  use  in  selling. 

Price  to  be  Asked.  This  is  a  matter,  for  determining 
which  no  absolute  and  definite  rule  can  be  given.  It  is 
pretty  safe  to  say,  that  inventors  are  rather  apt  to  over- 
estimate than  underestimate  the  value  of  their  inventions. 
Of  course,  the  more  profit  there  is  to  be  made  from  an 


204  The   Sale   of   Patents. 


invention,  and  the  larger  market  there  is  for  it,  the  more 
valuable  it  is.  If  it  appeals  to  but  a  small  and  widely  dis- 
persed class,  its  value  will  be  less.  If  it  is  a  new  and  radical 
improvement  in  the  manufacture  of  some  staple  article,  as 
iron  or  steel,  like  the  Bessemer  process,  for  instance,  a 
half-million  dollars  would  be  a  moderate  price  for  it ;  if  a 
meritorious  improvement  on  some  household  article  in 
general  use,  or  some  article  of  dress,  or  a  new  and  amusing 
toy,  a  few  thousands  might  be  a  fair  price.  Again,  if  a 
really  valuable  improvement  in  some  important  agricultural 
implement,  as  a  reaper  or  mower,  from  twenty  to  fifty  thou- 
sand dollars  would  probably  not  be  exorbitant.  In  no  case 
can  an  inventor  expect  to  get  but  a  fraction  of  the  value  of 
his  invention,  as  shown  by  the  gross  profit  to  be  derived 
from  it;  for  he  must  be  able  to  offer  the  lion's  share  of  this 
profit  to  the  purchaser,  as  an  inducement  to  buy;  and,  be- 
sides, the  purchaser  will  have  the  trouble  and  risk  of  making 
this  profit  piecemeal,  as  it  were,  from  the  actual  use  and  sale 
of  the  invention.  The  advice  of  friends  who  are  in  busi- 
ness, especially  if  their  business  is  such  as  to  make  them 
conversant  with  the  market  for  the  device  under  considera- 
tion, will  be  of  great  value  in  fixing  the  asking  price  for  a 
patent.  Having  fixed  upon  the  asking  price,  it  is  then 
quite  safe  to  lessen  it  by  at  least  one-fourth  of  its  amount, 
and  on  this  basis  proceed. 

Value  of  Territorial  Rights.  Having  fixed  upon 
the  gross  sum  to  be  asked  for  the  whole  of  a  patent,  it  is 
very  easy  to  determine  the  value  of  territorial  rights  under 
the  same.  If  the  whole  value  of  a  patent  is  ten  thousand 
dollars,  a  state  right  will  be  worth  just  such  a  part  of  the 
whole  as  its  population  bears  ratio  to  the  population  of  the 
whole  country.     Take,  for  instance,  the  State  of  Connecti- 


The   Sale   of   Patents.  205 


cut :  its  population  is  about  five  hundred  and  forty  thousand, 
while  the  whole  population  of  the  United  States  is  about 
thirty-eight  millions.  The  value  of  the  right  for  this  state 
will  be  arithmetically  expressed  thus : 

siftHHHhy  X  $10,000  =  ^142 ; 

or,  not  to  put  too  fine  a  point  upon- it,  one  hundred  and 
fifty  dollars.  But  the  inventor  can  not  afford  to  sell  one 
state  at  the  same  rate  that  he  would  sell  all  the  states  in  a 
lump.  The  price  for  a  single  state  should  be  double,  or 
even  treble,  the  exact  proportion  which  the  one  state  bears 
to  all  the  states  together ;  so  that  the  price  of  the  State  of 
Connecticut  would  be  three  hundred  dollars,  or,  if  trebled, 
four  hundred  and  fifty  dollars.  This  rule,  however,  should 
not  be  stringently  applied  to  any  of  the  Gulf  States,  nor  to 
any  state  west  of  Missouri,  except  California,  for  the  reason 
that  these  excepted  states  are  not  as  much  interested  in 
manufacturing  as  are  their  sister  states,  and,  for  some  other 
reasons,  do  not  offer  as  good  markets. 

An  advance  of  fifty  per  cent  over  the  value,  as  deter- 
mined by  the  population,  is  enough  to  put  upon  these 
excepted  states.  No  advance  whatever,  over  this  value, 
should  be  asked  for  territories.  Having  ascertained  the 
value  of  a  state  in  this  manner,  the  value  of  a  single  county 
can  be  determined  in  precisely  the  same  way,  — first  finding 
the  value  as  determined  by  the  ratio  the  population  of  the 
county  bears  to  the  population  of  the  whole  state,  and  then 
doubling  the  sum.  The  value  of  a  town  may  be  determined 
in  precisely  the  same  way  from  the  value  of  a  county.  The 
census  of  the  United  States,  taken  in  1870,  by  states  and 
counties,  will  be  found  further  along.  Those  who  desire  to 
sell  rights  for  towns,  will  have  to  procure  the  more  extended 
census  report  for  this  purpose. 


2o6  The   Sale   of   Patents. 


Shop  Rights.  A  "shop  right,"  so  called,  is  the  right 
to  use  the  patent  or  to  manufacture  under  it,  at  some  shop 
or  manufactory ;  it  may  be  restricted  to  a  certain  place,  or 
left  unrestricted.  It  can  not  be  considered  advisable  to 
make  sales  of  this  kind  under  a  patent,  unless  there  are 
strong  reasons  why  the  territory  should  not  be  sold.  As 
such  a  right,  when  no  royalty  is  reserved,  is  liable  to  abuse, 
it  is  very  difficult  to  fix  upon  the  value  of  it;  for,  although 
a  factory  may  have  been  doing  but  a  small  business  previous 
to  the  purchase  of  the  shop  right,  the  factory  may  thereafter 
expand  its  business,  so  as  to  practically  interfere  with  sales 
under  the  patent  in  all  parts  of  the  country. 

A  shop  right  should  be  limited  to  a  certain  annual  pro- 
duction and  to  a  certain  place.  If  this  is  not  done,  an 
effort  should  be  made  to  ascertain  the  annual  production 
of  the  factory  to  which  the  sale  is  to  be  made,  as  compared 
with  the  like  product  of  the  whole  country;  and  then 
a  proportionate  price  should  be  fixed  upon  the  shop  right, 
doubling  the  value  as  shown  by  the  computation,  in  the 
same  manner  as  was  directed  for  fixing  the  value  of  state 
rights.  There  are  some  kinds  of  patents  under  which  it 
may  be  advisable  to  sell  shop  rights,  —  as,  for  instance,  an 
improvement  in  the  manufacture  of  steel.  The  greater 
part  of  all  the  establishments  for  making  steel  will  be  found 
congregated  in  three  or  four  manufacturing  centers,  and 
the  proper  and  sensible  way  of  making  such  a  patent  avail- 
able to  them,  is  to  sell  them  each  a  shop  right.  It  is  not 
difficult,  in  such  cases,  to  ascertain  the  amount  of  the 
annual  production  of  each  establishment,  and  this  amount, 
as  compared  with  the  whole  annual  production  of  the 
whole  country,  will  furnish  the  basis  for  computing  the 
value  of  the  shop  right,  provided,  of  course,  that  the  gross 
price  for  the  whole  patent  has  already  been  fixed  upon. 


The   Sale   of   Patents.  207 


Royalties.  A  royalty  is  a  duty  paid  by  one  who  uses 
the  patent  of  another,  at  a  certain  rate  for  each  article  or 
quantity  manufactured,  or  a  percentage  upon  the  sales. 
This  method  of  realizing  from  a  patent  is,  perhaps,  the 
commonest  of  any;  and,  if  the  patent  is  a  valuable  one, 
and  the  party  who  manufactures  tfie  article  acts  in  good 
faith,  it  is  generally  the  most  profitable  for  the  patentee  in 
the  long  run.  On  the  other  hand,  if  the  patent  is  of 
doubtful  merit,  the  patentee  better  sell  it  outright,  and  it 
will  be  best  in  any  case,  if  a  fair  price  can  be  realized,  for 
both  parties  to  the  negotiation  will  then  be  freed  from  any 
danger  of  injury  happening  to  them  from  the  bad. faith  of 
the  other  party. 

The  royalty  to  be  asked,  where  a  patent  is  let  out  in  this 
way,  differs  very  much  with  the  article  which  is  the  subject 
of  the  patent.  If  the  patent  is  an  improvement  upon  an 
article  of  staple  manufacture,  it  is  best  to  keep  the  retail 
price  as  low  as  possible;  and,  to  effect  this,  the  royalty 
must  be  low,  varying  from  three  to  five  per  cent  of  the 
amount  of  the  sales.  On  large  and  heavy  machinery,  from 
five  to  eight  per  cent  of  the  selling  price  is,  perhaps,  a  fair 
charge.  On  agricultural  machinery,  from  six  to  nine  would 
not  be  unreasonable.  On  small  articles  of  jewelry,  fancy 
articles,  toys,  dress,  etc.,  a  royalty  amounting  to  ten  per 
cent  of  the  gross  sales  is  not  too  much.  In  any  case,  it  is 
not  best  to  leave  the  manufacturer  free  to  make  as  many  or 
as  few  as  he  chooses  of  the  article;  for  he  may  choose  to 
make  none,  and  then  the  patentee  will  get  nothing,  and 
the  manufacturer  will  still  retain  his  license.  All  agree- 
ments upon  royalty  should  contain  a  clause,  that  if  a 
manufacturer  shall  not  pay  royalty  upon  a  certain  minimum 
number,  the  patentee  shall  have  the  option  of  declaring  the 
license  null  and  void. 


2o8  The   Sale   of   Patents. 


Forms  of  this  kind  will  be  found  in  that  part  of  this 
volume  devoted  to  Forms.  All  such  agreements  should 
also  contain  a  condition,  that,  at  stated  times,  the  manu- 
facturer shall  render  to  the  patentee  a  true  and  exact  account 
of  all  the  patented  articles  made  and  sold  by  him  since  the 
last  account  and  payment,  to  which  account  the  patentee 
shall  have  the  right  to  require  the  oath  of  the  manufacturer, 
and  that,  if  then  the  patentee  is  not  satisfied,  he  shall  have 
the  right  to  view  the  manufacturer's  books.  The  licensee 
should  agree  to  make  no  competing  article,  and  also  to 
stamp  the  date  of  the  patent  upon  each  article. 

If  one  manufacturer  will  undertake  to  supply  the  whole 
market,  and  will  fix  the  minimum  royalty  which  he  must 
pay  sufficiently  high,  then  it  is  best  to  let  him  have  the  sole 
right  to  manufacture;  but,  if  it  becomes  necessary  to  let 
the  patent  out  to  more  than  one,  then  the  minimum  amount 
of  royalty  should  be  fixed  upon  the  same  general  principle 
as  followed  in  determining  the  value  of  a  shop  right. 


METHODS    OF    SALE. 

By  Circular.  Having  settled  preliminary  matters,  and 
having  become  acquainted  with  the  nature  of  the  various 
kinds  of  rights  which  it  is  usual  to  dispose  of  under  patents, 
the  next  question  to  be  answered  is,  What  class  of  persons 
will  be  the  most  likely  to  buy  the  patent,  or  rights  under  it? 
To  this  the  answer  is  plain.  It  is  likely  to  be  most  readily 
sold  to  some  one  of  that  class  of  manufacturers  who  are 
making  articles  of  the  same  class  as  this.  How  to  get  the 
names  and  addresses  of  all  of  such  a  class?  Answer :  there 
are  men,  in  New-York  and  other  large  cities,  who  make  it 


The   Sale   of   Patents.  209 


their  business  to  furnish,  for  a  consideration,  full  and  com- 
plete lists  of  all  parties  engaged  in  any  particular  trade, 
occupation,  profession,  or  manufacture,  throughout  the 
country.  The  inventor  has,  let  us  suppose,  devised  a  new 
and  useful  article  of  jewelry  for  gentlemen,  —  say  a  shirt- 
stud  or  sleeve-button.  He,  of  course,  will  naturally  expect 
to  sell  his  patent  to  some  manufacturing  jeweler,  and  accord- 
ingly he  will  procure,  from  one  of  these  agents  referred  to, 
a  list  of  all  such  parties,  either  in  some  particular  part  of 
the  country,  or  in  the  whole  country.  It  is  not  generally 
advisable  to  procure  more  than  a  partial  list  at  first,  because 
a  sale  may  be  made  to  one  of  these,  and,  if  not,  then  the 
list  can  be  readily  enlarged,  from  time  to  time,  as  may 
become  desirable. 

Having  procured  such  a  list  of  parties,  the  next  thing  is 
to  properly  present  the  thing  to  them,  one  by  one,  and  for 
this  purpose  it  is  advisable  to  prepare  a  circular,  bearing  a 
good  "  cut "  of  the  invention,  if  it  be  susceptible  of  such 
illustration,  and  containing  a  concise  but  very  careful 
description  of  the  invention  and  its  operation,  setting  forth 
its  advantages  over  the  common  article  or  process  on  which 
it  is  an  improvement.  It  should  contain  a  careful  statement 
of  the  actual  first  cost  of  the  article  or  process,  supported 
by  facts  and  figures,  and  offers  of  responsible  parties,  if 
any  have  been  made,  to  manufacture  at  such  prices.  It 
should  also  show  what  a  reasonable  retail  price  would  be,  as 
governed  by  the  margins  which  obtain  in  the  trade  for 
similar  articles,  and  from  this  deduce  the  profit  to  be  made 
on  a  single  specimen.  It  should  further  show,  by  actual 
statistics,  taken  from  reliable  sources,  how  extensive  a 
market  is  offered  to  the  invention,  taking  into  account 
the  average  life  of  the  article  and  the  whole  duration  of 
the  patent,  and  from  this  should  be  computed  the  whole 
27 


2io  The   Sale   of   Patents. 


sum  to  be  realized,  if  the  whole  market  is  supplied.  This 
figure  will  always  be  a  large  one;  and,  after  making  this 
computation,  it  is  advisable  to  say,  in  substance,  as  follows : 
"  Even  if  but  one-half  or  one-fourth  of  the  whole  market 
is  actually  supplied,  the  gross  profit  will  be,"  etc.,  etc.; 
which,  being  a  reasonable  supposition,  can' hardly  fail  to 
carry  weight.  If  the  claim  in  the  patent  is  a  strong  one, 
it  is  best  to  insert  it  in  the  circular,  and  call  attention  to  its 
strength. 

It  is,  probably,  not  best  to  put  into  the  circular  the  terms 
upon  which  the  patent,  or  rights  under  it,  will  be  sold. 
That  can  be  better  set  forth  in  a  letter  to  accompany  the 
circular.  The  following  circular,  founded  upon  an  imagin- 
ary "Improved  Collar  Stud,"  will  illustrate  the  general 
method  to  be  followed  in  preparing  such  a  circular :  — 

IMPROVED  COLLAR  STUD. 

Letters-Patent  qr   77~  |p  Dated 

No.  100,010.  J  _  lib  June  16,  1871. 

This  is  an  indispensable  article  of  a  gentleman's  toilet.  It  is  not  only  a 
perfect  collar-stud,  but  an  equally  perfect  tie-holder.  All  who  have  ever 
worn  a  "snap"  or  butterfly  tie— and  this  comprises  all  American  mankind- 
are  well  aware  of  the  vexations  incident  to  fastening  the  loop  of  these  ties 
over  the  common  shirt-button  or  collar-stud.  Many  a  hasty,  if  not  profane, 
ejaculation  has  been  the  result  of  attempting  this  task.  It  has  often  been  a 
matter  of  equal  disgust  for  a  gentleman— a  wearer  of  one  of  these  ties— on 
reaching  home,  to  find  that  he  has  been  bravely  marching  through  the  streets, 
minus  a  neck-tie,  which  has,  in  an  unlucky  moment,  escaped  the  faithless 
grasp  of  the  common  button  or  stud. 

This  little  device  completely  cures  these  troubles.  The  loop  of  a  -tie  is  as 
readily  slipped  into  one  of  the  little  hooks,  upon  the  front  of  the  stud,  as  a 
hat  is  hung  on  a  nail,  and  it  can  not  escape  therefrom  by  accident. 

The  owner  of  the  patent,  which  has  a  broad  and  strong  claim,  is  not  in 
circumstances  which  will  allow  him  to  undertake  the  introduction  and  sale 
of  the  studs.  He  will,  therefore,  dispose  of  the  patent,  or  rights  under  it,  and 
asks  attention  to  the  following  remarks,  which  show  its  great  value. 

First  Cost.  It  is  made  of  gold-plated  sheet-metal,  commonly  known 
among  manufacturing  jewelers  as  "stock  plate,"  and  all  the  parts  are  struck 
up  by  dies,  so  that  it  can  be  made  very  cheaply,  at  a  cost  not  exceeding  five 


The   Sale  of   Patents.  211 


cents  apiece.  Messrs.  Brazos  &  Copperman,  of  Waterbury,  Conn.,  and  also 
Mr.  Charles  Ringman,  of  North "Attleboro,  Mass.,  have  offered  to  make  them, 
in  quantities,  at  that  price.  Of  course,  if  these  parties  can  furnish  the  studs 
at  that  price,  the  real  cost  is  less ;  for  manufacturers  do  not  generally  carry  on 
their  business  for  fun  or  philanthropy. 

The  Retail  I'kk  k.  Plated  collar-studs,  of  the  common  kinds,  sell  at 
retail  prices  varying  all  the  way  from  twenty-five  cents  to  one  dollar,  accord- 
ing to  plate  and  workmanship.  No  stud,  which  is  as  well  plated  as  this,  sells 
for  less  than  fifty  cents,  and  as  these  last  are  merely  the  common  kind,  with 
no  improvements,  fifty  cents  would  be  a  reasonable  retail  price  for  this 
improved  stud,  giving,  as  the  profit  on  a  single  article,  forty-five  cents.  This 
allows  the  manufacturer  to  sell  to  the  jobber  for  ten  cents  apiece,  a  profit  of 
one  hundred  per  cent;  the  jobber  to  the  wholesale  dealer  for  fifteen  cents,  a 
profit  of  fifty  per  cent;  the  wholesale  dealer  to  the  retailer  at  twenty-five 
cents,  a  profit  of  sixty -six  and  two-thirds  per  cent ;  and  the  retail  dealer  to 
the  consumer  at  fifty  cents,  a  profit  of  one  hundred  per  cent ;  so  that  while 
the  retail  price  is  not  higher  than  for  the  common  article,  the  profits  of  all 
concerned  are  enormous,  and  will  make  it  a  favorite  with  the  trade. 

The  Market.  Of  the  38,000,000  of  people  in  the  United  States,  about  one- 
fourth  (9,500,000)  are  men,  and  about  one-half  of  these  (4,750,000)  are  male 
youth,  the  whole  mass  of  vyhom  wear  ties,  three-fourths  of  them  (3,562,500) 
"  snap  "  ties.  One  of  these  studs  can  be  sold  to  at  least  one-fourth  of  this  last 
number,  which  makes  890,625,  on  which  the  owner's  profit,  at  five  cents 
apiece,  amounts  to  $44,531.25 ;  and,  as  the  average  life  of  a  stud  is  about  two 
years,  this  sum  must  be  multiplied  by  eight  to  give  whole  profit  for  the  sev- 
enteen years'  duration  of  the  patent,  which  gives  the  comfortable  product  of 
3356,250. 

The  Capital  Required  is  very  small,  and  can  be  rapidly  turned  over. 

For  Terms,  etc.,  address 

GILES  GENIUS, 

Hartford,  Conn. 

This  circular  should  be  printed  in  good  taste.  If  the 
inventor  can  afford  to  put  it  on  heavy,  tinted  paper,  in 
some  fashionable  type,  as  is  the  so-called  "  modern  old- 
style  M  at  present,  so  much  the  better.  The  matter  of  the 
circular  should  be  written  in  as  clear,  crisp,  and  sparkling 
style  as  the  nature  of  the  subject  will  admit,  and  the  com- 
position and  press-work  should  be  as  perfect  as  possible. 

If  the  inventor  himself  is  not  capable  of  doing  justice 
to  the  subject,  let  him  find  some  literary  friend,  or  some 
other  properly  educated  person,  to  do  it  for  him.  Let  the 
statements  be  just  as  strong  as  the  facts  will  bear.     It  will 


2i2  The   Sale   of   Patents. 


be  observed  that  the  terms  are  not  given  in  this  circular. 
This,  with  some  other  matters,  can  better  be  reserved  for  a 
written  letter,  to  accompany  the  circular.  It  is  advisable 
to  accompany  this  circular  with  a  written  letter,  for  the 
reason  that  the  receiver  thereof  will  be  obliged,  in  common 
courtesy,  to  give  the  matter  attention  enough  to  understand 
it,  which  attention  he  might  not  give  to  a  mere  circular. 
Besides,  the  letter  makes  the  matter  more  of  a  personal 
thing  to  the  receiver,  and  does  not  make  the  terms  public ; 
all  of  which  tends  to  give  weight  to  the  matter.  The 
general  style  may  be  understood  from  the  following  form 
for  such  a  letter :  — 

[letter.] 

Hartford,  Conn.,  January  1, 1871. 
Mr.  Hiram  Hautboy  : 

Dear  Sir,— May  I  ask  your  careful  attention  to  the  in- 
closed circular?  I  believe  that  the  facts  set  forth  therein  will  show  you  that 
1  offer  for  sale  a  really  valuable  invention.  The  figures,  making  every  possi- 
ble allowance,  and  then  dividing  this  by  a  large  fraction,  show  that  there  is  a 
fortune  in  this  little  thing.  But  I  am  in  no  condition  to  undertake  the  intro- 
duction of  the  article. 

In  the  first  place,  I  have  no  means. 

In  the  next  place,  I  am  a  mechanic,  and  ignorant  of  business  ways  and 
business  men. 

You  are  in  a  business  which  will  enable  you  to  manufacture  and  introduce 
this  stud  readily. 

I  offer  you  the  whole  patent  for  $3,000.  I  shall  be  satisfied  to  take  part 
cash,  and  part  approved  notes.  If  you  do  not  care  to  purchase  the  whole 
patent,  I  may  be  willing  to  sell  you  a  territorial  or  shop  right,  or  allow  you  to 
manufacture  on  a  royalty. 

Very  respectfully, 

GILES  GENIUS. 

This  circular  and  letter  (if  any)  should  be  sent  to  the 
different  parties  mentioned  in  the  list.  When  an  answer  is 
received  looking  toward  negotiation,  if  any  definite  terms 
are  offered,  the  inventor  should  most  carefully  consider 
upon  it,  before  rejecting,  even  if  greatly  under  the  price 


The   Sale   of   Patents.  213 


asked,  remembering  always  that  all  that  is  made  over  and 
above  the  actual  expenses  incurred,  is  clear  profit.  If  a 
shop  right,  territorial  right,  or  royalty  right  is  wanted,  the 
suggestions  in  the  foregoing  pages,  on  fixing  the  value 
of  such  rights,  will  be  found  of  assistance. 

If  it  is  thought  that  better  terms  can  be  obtained,  it 
is  best  to  inform  the  correspondent  that  the  inventor  is 
"greatly  obliged  for  the  kind  offer  made,  and  will  take  it 
into  serious  consideration,"  etc.,  etc.  A  rule  which  should 
be  imperative  in  all  business  matters,  comes  into  play  here. 
Never  be  rude  or  peremptory  in  declining  an  offer,  but 
always  express  yourself  in  the  kindest  and  pleasantest  terms 
of  which  you  are  master. 

It  is  hardly  possible  that  an  inventor  of  any  merit  can 
run  the  gauntlet,  in  this  manner,  of  all  the  manufacturers 
in  the  country,  whose  business  is  of  a  kind  to  naturally 
interest  them  in  the  invention,  without  finding  a  purchaser. 

Newspaper  Advertising.  Another  method  of  get- 
ting an  invention  before  the  public  is  through  the  medium 
of  newspaper  advertising.  This  is  more  expensive  than 
the  method  just  described,  and  is  not,  perhaps,  advisable 
till  that  fails,  though  it  may  be  often  happily  used  in  con- 
junction with  it.  If  the  inventor  can  afford  it,  it  is  well 
to  have  the  invention  illustrated  and  described  in  one  or 
more  of  the  scientific  and  mechanical  publications  of  the 
day,  of  which  The  Scientific  American  and  The  American 
Artisan,  of  New- York,  and  The  Scientific  Press,  of  San 
Francisco,  are  notable  examples.  Such  illustration  and 
description  may  sometimes,  of  itself,  prove  sufficient.  If 
not,  it  may  be  followed  up  by  ordinary  advertising;  or, 
this  illustration  and  description  may  be  dispensed  with, 
and   the   advertising   confined  to  the  regular  advertising 


2i4  The   Sale   of   Patents. 


columns.  In  doing  this,  the  advertisement  should  be  in- 
serted in  the  paper  or  papers  which  are  designed  to  meet 
the  eye  of  the  class  or  classes  of  persons  to  whom  the  invention 
is  of  special  interest.  Any  reliable  advertising  agent  will 
be  pleased,  on  request,  to  furnish,  free  of  charge,  a  list  of 
any  required  size,  extending  over  the  whole  country  or  any 
part  thereof,  which  circulate  among  any  special  class  of 
people,  and  the  advertisement  of  the  invention  should  be 
inserted  in  one  or  more  such  papers,  as  the  judgment  and 
means  of  the  inventor  may  dictate.  It  is  very  much  better 
to  insert  a  small  advertisement  in  a  large  number  of  papers, 
than  to  occupy  a  large  space  in  a  smaller  number.  The 
experience  of  old  advertisers  confirms  this  proposition. 
If  the  inventor  is  not  skilled  in  writing  advertisements, 
it  will  be  best  for  him,  if  possible,  to  get  some  properly 
skilled  person  to  write  the  advertisement  for  him ;  for  it  is 
no  common  accomplishment  to  be  able  to  put  into  a  small 
space,  in  an  attractive  and  striking  and  yet  not  vulgar 
manner,  a  notice  of  any  thing,  which  shall  say  just  enough 
to  induce  the  reader  to  push  further  inquiries.  Suppose 
the  invention  to  be  an  improvement  in  the  manufacture  of 
coach  varnish :  an  advertisement  something  like  the  follow- 
ing would  not  be  inappropriate :  — 

ANEW  COACH  VARNISH.— A  most  valuable  patented  improvement  in 
COACH  VARNISH  is  offered  for  sale;   thoroughly  tried  and  tested. 
Address  T.  W.  COPAL,  Huyshope,  Conn. 

This  will  occupy  but  few  lines  of  space,  and  yet  tells 
enough  to  interest  varnish  and  coach  men  therein.  It  is 
not  advisable  to  make  much  parade  of  the  patent  as  a 
patent,  for  there  is  something  of  a  prejudice  among  busi- 
ness men  generally  against  patents,  on  account  of  the  great 
number  of  humbugs  which  have  been  pushed  into  notice 


The   Sale  of   Patents.  215 


under  their  guise ;  but  this  prejudice  vanishes,  when  they 
discover  that  the  patent  covers  a  real  improvement. 

The  proper  papers  in  which  to  insert  an  advertisement 
like  the  above,  would  be  those  which  are  intended  for  circu- 
lation among  varnish  users,  varnish  manufacturers,  and 
carriage  builders,  a  list  of  which,  with  the  charge  for 
insertion,  the  advertising  agents  can  readily  furnish. 
When  answers  to  advertisements  are  received,  they  can 
be  replied  to  by  such  a  circular  as  that  hereinbefore  de- 
scribed, accompanied  by  a  letter  substantially  like  that  set 
forth,  changed  to  meet  the  requirements  of  the  case. 

The  inventor  must  not  be  afraid,  if  hjs  means  permit,  to 
continue  his  advertising  for  some  little  time ;  for  experience 
has  shown,  that,  unless  a  person  is  more  than  ordinarily 
interested  in  the  matter  advertised,  he  has  to  see  an  adver- 
tisement a  number  of  times  before  he  will  take  any  active 
step  in  reference  to  it. 

Personal  Solicitation.  Patents  are  frequently  sold 
by  personal  solicitation,  and,  if  the  inventor  cares  to  make 
the  sale  of  rights  under  his  patent  his  main  business,  and 
can  get  safely  through  the  period  of  rawness  which  always 
attends  the  commencement  stage  of  all  such  attempts, 
without  giving  up  the  business  in  disgust,  this  method 
of  sale  may  prove,  in  the  end,  the  most  remunerative. 
The  inventor  must,  however,  give  his  whole  time  to  the 
business,  must  have  means  sufficient  to  allow  him  to  travel, 
and  must  persevere  till  he  learns  not  to  be  discouraged  at 
any  and  all  disheartening  obstacles  he  may  encounter.  In 
short,  he  must  make  of  himself  a  successful  salesman,  and 
a  salesman  of  rather  a  rare  order,  a  task  which  is  evidently 
so  difficult,  that,  unless  an  inventor  is  satisfied  he  has  pecu- 
liar qualifications  for  it,  he  better  not  undertake  it.     If  he 


216  The   Sale   of   Patents 


does,  however,  see  fit  to  undertake  it,  a  few  suggestions 
may  be  of  assistance.  Upon  arriving  at  a  town  where  he 
proposes  to  make  a  sale,  he  should  be  provided  with  a  good 
model  or  models,  and  plenty  of  circulars  containing  sub- 
stantially the  matter  set  forth  in  the  circular  hereinbefore 
described,  making  the  closing  part  to  read:  "Rights  for 
sale  on  the  most  liberal  terms  at  "  (wherever  the  inventor 
has  his  head-quarters).  If  the  place  boasts  a  newspaper, 
the  matter  should  be  duly  advertised,  and  a  good  "  local  " 
notice  will  be  found  a  great  help.  Suppose  the  invention 
to  be  a  new  domestic  article,  as  a  knife-sharpener,  the 
advertisement  might  be  in  substance  as  follows :  — 

A  GREAT  WANT  FILLED.— A  simple,  cheap  and  effective  article  for  use 
in  every  household.    Great  Profits  made.    Rights  under  the  patent  for 
sale  low.    Call  at HARVEY  HANDY,  Patentee. 

Of  course,  having  interested  a  man  enough  to  call,  the 
inventor  must  press  upon  him,  by  aid  of  model,  facts  and 
figures,  etc.,  the  money  there  is  in  it  for  the  purchaser.  If 
any  resident  of  the  right  stamp  can  be  made  to  assist,  by 
giving  him  a  commission  on  sales,  it  will  prove  a  valuable 
help.  A  thing  sometimes  done  by  traveling  salesmen  of 
patents  is,  to  find  some  resident  who  is  "up  to  snuff,"  as 
the  saying  is,  and  arrange  with  him  that  he  shall  hold  him- 
self out  as  ready  to  buy  a  half-interest  in  the  territory 
which  it  is  proposed  to  sell,  and  they  two,  —  the  salesman 
and  the  decoy-duck, — go  in  search  of  some  third  party 
who  will  really  buy  the  other  half.  The  price  of  the  terri- 
tory is  put  at  double  that  which  the  seller  really  means  to 
realize,  and,  when  the  third  party  is  found,  to  really  buy 
the  other  half  of  the  right,  the  territory  is  assigned  to  the 
decoy-duck  and  such  party  jointly;  but  no  money  is  paid, 
except  by  the  third  party,  and  out  of  this  the  seller  usually 


The   Sale   of   Patents.  217 


pays  a  commission  to  the  decoy-duck.  The  fact  that  a 
neighbor  is  ready  to  purchase  a  half-interest  in  the  right,  is 
usually  a  great  inducement  to  the  third  party  to  buy  the 
other  half.  The  difference  between  a  transaction  of  this 
kind  and  a  swindle  is  so  small,  that  a  judge  or  jury  would 
not  be  apt  to  perceive  it. 

If  the  inventor  chooses  to  take  his  model  in  his  hand, 
and  attack  parties  most  likely  to  become  interested,  at 
their  places  of  business,  he  may  make  sales;  but,  in  this 
case,  he  will  find  that  previous  advertising  will  pave  the 
way  for  personal  effort. 

Itinerant  Agents.  In  almost  every  county  in  the 
United  States  may  be  found  persons  who,  off  and  on, 
as  the  phrase  is,  make  it  their  business  to  sell  patent-rights, 
traveling  about  the  while  for  that  purpose.  It  must,  in 
truth,  be  said  that  some  of  these,  by  their  fraudulent  prac- 
tices, have  done  much  toward  bringing  the  business  of  a 
traveling  salesman  of  patents  into  disrepute.  These  fraud- 
ulent practices  have  consisted  in  making  grossly  false  repre- 
sentations, as  to  the  first  cost  of  their  articles;  in  taking 
notes  for  the  whole  or  part  of  the  consideration  of  the 
sales,  under  the  promise  to  retain  them  till  due,  so  that  the 
purchaser  should  have  a  chance  to  see  that  their  represent- 
ations were  true  before  making  final  payment,  and  then 
selling  the  notes  instanter;  and  the  like.  Many  of  these 
men,  —  the  honest  ones,  — are  really  good  agents  to  employ, 
as  they  are  usually  willing  to  bear  their  own  expenses,  and 
take  a  share  of  the  proceeds  of  the  sales  for  their  pay.  If 
an  inventor  has  a  choice  among  different  ones,  he  should, 
other  things  being  equal,  select  the  one  who  has  means  that 
make  him  pecuniarily  responsible.  Unless  a  person  has 
such  means,  or  unless  the  inventor  is  satisfied  that  he  is 
28 


218  The   Sale   of   Patents. 


a  man  of  the  firmest  integrity,  it  can  not  be  considered 
safe  to  give  him  an  unlimited  power  of  attorney  to  make 
sales;  nor  even  then  is  it  desirable,  because  it  is  always 
best  to  make  sure  that  the  agent  can  not  keep  from  the 
inventor  any  of  the  funds  he  may  receive,  nor  put  the 
patent  into  the  hands  of  a  confederate  by  means  of  a  bogus 
sale. 

Control  over  the  funds  received  can  be  kept,  by  provid- 
ing, in  the  power  of  attorney,  that  all  cash  received  shall 
be  deposited  to  the  joint  order  of  the  agent  and  the  in- 
ventor, and  that  all  notes  taken  shall  be  to  their  joint 
order.  Control  over  unadvisable  or  fraudulent  sales  can 
be  kept  by  providing,  in  the  power,  that  the  sales  made  are 
conclusive,  unless  the  inventor  shall,  within  say  ten  days, 
signify  his  non-acceptance  thereof. 

Forms  for  powers  of  attorney,  with  these  or  equivalent 
provisions,  will  be  found  in  that  part  of  the  book  devoted 
to  Forms. 

Stock  Companies.  A  great  many  patents  upon  in- 
ventions are  realized  from  by  making  them  the  property  of 
stock  companies,  which  are  either  specially  chartered  by 
the  state  or  national  legislature,  or  are  organized  under  the 
joint-stock  laws  which  prevail  in  most  if  not  all  the  states. 
This  is  a  perfectly  legitimate  and  often  a  very  easy  way  of 
realizing  money  from  an  invention. 

The  inventor  takes  his  pay  either  wholly  in  cash,  or  from 
stock  in  the  company,  or  partly  in  cash  and  partly  in  stock. 

The  modus  operandi  is  as  follows:  The  inventor,  let  us 
say,  wishes  to  realize  $10,000  in  cash  and  $10,000  in  stock, 
and  it  is  necessary  to  have  $15,000  actual  cash  capital 
to  work  the  patent.  In  such  a  case,  the  nominal  capital 
of  the  company  may  generally  well  be  put  at  $100,000. 


The   Sale   of   Patents.  219 


We  will,  first  of  all,  reserve  $15,000  of  this  nominal 
capital  to  be  used  in  securing  the  aid  and  countenance  of 
influential  men,  to  be  given  away  by  the  inventor  for  this 
purpose,  though,  of  course,  this  part  of  the  operation  is 
usually  confidential  between  the  inventor  and  those  whose 
aid  he  seeks.  The  inventor  must  therefore  reserve  for  him- 
self in  all  $25,000  of  the  nominal  stock.  This  leaves 
$75,000  in  stock  to  be  sold,  whereby  to  realize  $25,000  in 
cash, — $10,000  for  the  inventor  and  $15,000  for  actual 
cash  capital. 

Now,  to  raise  $25,000  cash  upon  $75,000  nominal  capital, 
each  share  sold  needs  to  pay  but  one-third  of  its  nominal 
value,  so  that  there  is  a  great  inducement  in  this  for  parties 
to  invest  in  the  stock.  Of  course,  to  make  this  operation 
successful,  the  inventor  must  be  able  to  show,  by  facts  and 
figures,  a  good  prospect  of  paying  from  six  to  ten  per  cent 
dividends  upon  the  nominal  capital;  and,  if  he  is  able  to 
do  this,  and  acts  with  a  fair  amount  of  shrewdness  in  secur- 
ing the  help  of  two  or  three  influential  men,  by  the  aid  of 
the  $15,000  in  stock  which  he  has  set  aside  for  this  purpose, 
his  task  is  very  easy. 

The  inducements  he  may  hold  out  to  investors  are  not 
only  the  hope  of  gain  from  dividends,  but  the  prospect  of 
becoming  officers  of  the  company,  as  president,  secretary, 
treasurer,  director,  etc.  When  such  companies  are  organ- 
ized, it  is  very  common  for  the  company  to  retain  the 
services  of  the  inventor  in  some  capacity,  so  that  the 
inventor  is  well  rewarded  by  present  cash,  by  stock,  and 
by  future  employment. 

If  the  inventor  is  content  to  take  his  pay  entirely  in 
stock,  then  his  task  is  just  so  much  the  easier;  and,  if  he 
is  able  to  organize  his  company  without  giving  away  stock, 
this  again  lightens  his  burden. 


220 


The   Sale   of   Patents. 


If  the  inventor  is  willing  to  put  in  his  invention  against 
say  $10,000  actual  cash  capital,  then  he  may  be  able  to  find 
two  or  three  men,  or  possibly  one  man,  who  will  put  the  cash 
against  the  invention;  and,  in  short,  there  are  numberless 
ways  in  which  this  programme  may  be  varied  to  meet  the 
circumstances  of  each  particular  case. 

The  details  of  the  organization  of  such  companies  must, 
of  course,  be  perfected  under  the  direction  of  some  com- 
petent lawyer,  who  will  see  that  the  local  laws  governing 
such  matters  are  duly  complied  with;  but  in  the  part  of 
this  book  devoted  to  Forms,  there  will  be  found  a  form  for 
articles  of  association  of  this  kind,  such  as  is  in  use  under 
the  laws  of  the  State  of  Connecticut,  which  laws  are  sub- 
stantially the  same  as  those  of  other  states  upon  the  same 
subject. 


FOREIGN  PATENTS 


SYNOPSIS  OF  LAWS  AND  OTHER  DATA. 


The  following  items  of  information  are  given  for  the  benefit 
of  those  who  may  have  in  contemplation  the  procurement 
of  foreign  patents:  — 

Canada.  The  Dominion  of  Canada  comprises  the 
provinces  of  Ontario,  Quebec,  Nova  Scotia,  New  Bruns- 
wick, British  Columbia,  and  Manitoba.  The  population, 
as  given  by  the  latest  census,  is  3,537,887,  and  the  area  of 
the  country  622,990  square  miles.  By  a  patent  act,  taking 
effect  September  1,  1872,  foreign  inventors  are  permitted 
to  take  patents  for  five,  ten,  or  fifteen  years,  as  the  applicant 
may  elect.  Patents  granted  for  five  or  ten  years  can  be 
readily  extended  for  the  full  term.  The  law  provides  for 
caveats,  disclaimers,  assignments,  and  re-issues.  The  Gov- 
ernment fee  for  a  patent  for  five  years  is  $20  gold,  for  ten 
years  $40,  and  for  fifteen  years  $60.  A  Canadian  patent 
expires  at  earliest  date  at  which  any  foreign  patent  for  the 
same  invention  expires.  An  invention,  to  be  patentable, 
must  not  have  been  in  public  use  or  on  sale  in  Canada, 
with  the  consent  and  allowance  of  the  inventor  for  more 
than  one  year  prior  to  the  application,  and  it  must  not 
have  been  patented  elsewhere  more  than  a  year  prior  to  the 
application. 


222  Foreign   Patents. 


A  patentee  must,  within  two  years  from  date  of  patent, 
commence  and  thereafter  continuously  carry  on,  in  Can- 
ada, the  construction  or  manufacture  of  the  patented  thing, 
and  he  must  not  after  one  year  from  and  after  the  date 
of  the  patent  import  the  patented  device  from  another 
country.  In  other  respects  the  Canadian  patent  law  is 
much  like  the  law  of  the  United  States.  Canada  is  a  mod- 
erately good  and  rapidly  improving  field  for  inventors. 
The  usual  charge  of  American  solicitors  for  Canadian  pa- 
tents for  five  years  is  from  $65  to  $75  gold,  including  Gov- 
ernment fees  and  all  other  charges,  for  a  patent  for  ten 
years  $85  to  #100,  and  for  a  patent  for  fifteen  years  from 
$105  to  #120.  A  model,  within  eighteen  inches  square, 
required.  There  is  no  examination  made  as  to  novelty; 
patent  issues  as  a  matter  of  course. 

Great  Britain.  A  patent  from  the  crown  only  covers 
England,  Ireland,  Scotland,  Wales,  the  Channel  Islands, 
and  the  Isle  of  Wight,  it  does  not  extend  to  any  of  the 
colonies.  The  population,  by  census  taken  in  1871,  is 
31,187,108,  and  the  area  122,511  British  square  miles. 
This  is  the  greatest  manufacturing  country  in  the  world. 
Almost  all  of  the  prominent  American  inventions,  as  hard 
rubber,  the  sewing-machine,  and  Pullman  cars,  have  been 
successfully  introduced  there,  and  a  really  good  American 
invention  can  always  be  handsomely  disposed  of  there. 
The  British  law  allows  no  publicity  of  the  invention  within 
the  realm  by  use  or  publication  prior  to  application,  and 
patents  are  granted  to  the  first  comer  whether  the  real  in- 
ventor or  not,  the  first  introducer  being  held  to  be  the  first 
inventor  within  the  realm. 

No  examination  is  made  as  to  novelty  or  utility,  and  the 
patent  issues  as  a  matter  of  course,  unless  some  private  per- 


Foreign   Patents.  223 


son  enters  an  opposition  and  shows  good  reason  why  a 
patent  should  not  be  granted,  which  thing  rarely  happens. 
The  duration  of  the  patent  is  fourteen  years,  but  expires 
with  foreign  patent  for  the  same  thing  expiring  previously. 

The  Government  fees  are  ^25  sterling  all  told,  or  about 
$125  gold,  which  can  be  paid  in  two  installments.  No 
model  required.  The  patent  must  be  produced  at  the 
Patent  Office  at  the  end  of  the  third  year  and  a  duty  of 
^"50  or  about  $250  paid,  and  there  is  a  similar  duty  at  the 
end  of  the  seventh  year  of  ^"ioo  or  about  $500.  There 
is  no  limit  within  which  manufacture  under  the  patent  must 
be  commenced,  and  no  restriction  on  the  importation  of 
the  patented  article  by  the  patentee. 

The  legal  status  of  patents  in  Great  Britain  is  substan- 
tially the  same  as  in  the  United  States.  The  usual  charge 
of  solicitors  for  these  patents  is,  including  all  charges, 
from  $300  to  $350  gold.  The  British  patent  reports  are 
splendid  books,  the  binding  alone  of  all  the  volumes  now 
issued,  some  hundreds  in  number,  costing  some  thousands 
of  dollars.  There  are  some  six  or  seven  sets  in  the  United 
States.  The  Astor  Library  of  New  York  city  and  the 
Patent  Office  at  Washington  each  have  a  set. 

France.  The  population,  by  census  of  1871,  is  36,- 
583,559,  and  the  area  203,738  square  miles.  Medicines 
and  chemical  compounds  are  not  patentable.  The  dura- 
tion of  the  patent  is  fifteen  years,  but  expires  with  any 
previous  foreign  patent  on  the  same  thing  expiring  pre- 
viously. The  grant  is  valid  only  to  the  inventor,  but  if 
another  person  procures  the  patent,  only  the  inventor  can 
dispossess  him.  No  examination  as  to  novelty  or  utility, 
and  the  patent  issues  as  a  matter  of  course.  No  publicity 
of  the  invention  in  France  permitted  prior  to  application. 


224  Foreign   Patents. 


Actual  working  of  the  invention  abroad  prior  to  the  French 
application  renders  the  patent  void.  It  is  yet  a  mooted 
question  what  other  previous  foreign  publicity  will  render 
a  French  patent  void.  No  model  required.  Government 
fee  for  patent  ioo  francs,  or  about  $20.  There  is  a  yearly 
tax  of  $20.  Patents  of  addition — improvements  on  the 
original — Government  fee,,  20  francs,  or  about  $5.  The 
patent  must  be  "worked"  within  two  years  from  date  of 
patent  and  must  not  cease  for  two  consecutive  years.  Im- 
portations of  the  patented  thing  by  the  patentee  not  per- 
mitted. France  carries  its  manufactures,  especially  of 
metals  and  textile  fabrics,  to  a  high  state  of  perfection,  and 
real  improvements  are  quickly  appreciated.  The  usual 
fees  of  solicitors  for  a  patent,  including  all  charges,  is 
about  $125. 

Belgium.  Population,  by  census  of  1866,  4,839,094; 
area,  11,366  Briitsh  square  miles.  Duration  of  patent, 
twenty  years,  but  expires  with  previous  foreign  patent  ex- 
piring previously;  so  that  this  application,  if  made  at  all, 
should  be  made  before  other  applications.  Patent  valid 
only  to  inventor  or  his  assigns.  Invention  must  not  have 
received,  prior  to  application  in  Belgium  or  elsewhere, 
publicity  sufficient  to  enable  it  to  be  put  in  practice.  Pat- 
ents of  addition  allowed,  the  same  as  in  France.  The 
Government  fee  upon  the  grant  is  a  tax  of  ten  francs,  or 
about  $2,  and  the  taxes  increase  regularly  each  year, — $4 
for  the  second  year,  $6  for  the  third,  and  so  on.  There  is 
no  examination  as  to  novelty  or  utility,  and  the  patent 
issues  as  a  matter  of  course.  No  model  required.  Patents 
can  be  extended  for  good  and  substantial  reasons.  The 
patent  must  be  worked- within  one  year  from  the  time  that 
it  is  commercially  worked  elsewhere,  and  the  working  must 


Foreign   Patents.  225 


not  thereafter  cease  for  one  year.  Importation  of  the  pat- 
ented article  by  patentee  permitted.  The  publication  of  a 
patent  in  an  official  patent  report  prior  to  the  Belgian 
application,  is  no  bar  to  a  Belgian  patent.  Usual  charge 
of  solicitors  for  Belgian  patent,  including  all  charges, 
$100. 

* 
Prussia.  Population,  by  census  of  1867,  24,043,902; 
area,  135,778  square  miles.  Patent  granted  to  first  appli- 
cant, whether  inventor  or  not.  Foreigners  must  apply 
through  a  Prussian  subject.  Duration,  at  the  pleasure  of 
the  Government,  from  six  months  to  fifteen  years, — usually 
six  years.  Applications  are  submitted  to  a  very  severe  ex- 
amination by  a  special  commission  of  professors  in  the 
Royal  Polytechnic  College  at  Berlin,  and  it  very  rarely 
happens  that  objections  more  or  less  serious,  and  often- 
times frivolous,  are  not  made.  Models  are  sometimes 
required,  and  always  in  sewing-machine  cases.  Six  months 
only  is  usually  allowed  for  commencing  the  working  of  the 
patent,  and  it  must  not  cease  for  a  whole  year.  Importa- 
tion of  the  patented  article  by  the  patentee  is  generally 
tolerated  by  the  Government,  but  not  always.  The  inven- 
tion must  not  have  been  published  or  worked  anywhere 
prior  to  application.  There  are  no  special  taxes  on  pat- 
ents; but  the  applicant  must  pay  for  stamping  and  regis- 
tration of  the  papers,  amounting  generally  to  about  $15, 
and  he  may  have  to  pay  other  charges,  sometimes  borne 
by  the  Government,  amounting  to  about  $98.  Usual  charge 
of  solicitor,  including  all  charges,  from  $150  upward. 

Austria  and    Hungary.     Population,  by  census  of 
I^7°»    35>943>592j    area,    241,123   British   square   miles. 
Patents  granted  only  to  inventors  or  their  assigns,  native 
29 


226  Foreign   Patents. 


or  foreign  j  not  granted  to  foreign  inventor  after  the  expir- 
ation of  his  foreign  patent  on  same  thing.  Medicines, 
foods,  and  chemical  compounds  not  patentable.  No  exam- 
ination as  to  novelty  or  utility.  Models  not  required. 
Must  not  have  been  worked  in  the  empire  or  described  in 
a  printed  publication.  Duration  of  patent,  from  one  to 
fifteen  years,  at  the  optionof  the  applicant ;  patents  granted 
for  less  than  the  full  term  can  be  extended  readily  from 
time  to  time,  till  the  whole  fifteen  years  have  been  occu- 
pied. The  tax  for  a  patent  for  one  year  is  $10,  two  years 
$20,  three  years  $30,  four  years  $40,  five  years  $50,  six 
years  $65,  seven  years  $82.50,  eight  years  $102.50,  nine 
years  $125,  ten  years  $150,  eleven  years  $180,  twelve  years 
$215,  thirteen  years  $255,  fourteen  years  $300,  fifteen 
years  $350.  As  the  taxes  for  the  whole  term  of  a  patent 
have  to  be  paid  in  advance,  the  advisable  method  is  to 
take  a  patent  for  one  year  and  then  extend  it  from  year  to 
year.  Must  be  worked  within  a  year.  An  interregnum 
of  two  years  in  the  working  destroys  the  patent.  Importa- 
tion of  the  patented  thing  by  the  patentee  generally  toler- 
ated, but  the  law  gives  no  such  right.  Since  the  Vienna 
Exposition,  American  inventions  are  well  appreciated ;  but 
the  courts  seem  to  fail  in  desire  to  do  justice  to  foreign 
patentees.  A  proper  charge  of  a  solicitor  for  an  Austrian 
patent  for  one  year,  including  all  expenses,  is  $150  gold, 
and  a  proper  charge  for  any  additional  number  of  years 
can  be  ascertained  by  adding  the  Government  tax  for  such 
number  of  years  to  the  $150.  A  proper  charge  for  the 
prolongation  from  year  to  year,  exclusive  of  the  Govern- 
ment tax,  is  $15  gold;  $500  gold  pays  for  a  patent  for  the 
full  term.  Separate  patents  for  Austria  and  Hungary  can 
be  had,  but  there  would  seem  to  be  no  propriety  in  it. 


Foreign   Patents.  227 


Russia.  Population,  in  1864,  77,269,858;  area,  2,266,- 
983  British  square  miles.  Patents  of  invention  granted  to 
natives  or  foreigners  for  three,  five,  or  ten  years,  as  asked 
for.  Patents  of  importation  are  granted  for  six  years,  but 
may  be  prolonged  to  ten  if  granted  to  inventor.  The 
invention  must  be  new  in  Russia,  and  not  published  in 
detail  elsewhere.  Something  of  an  examination  is  made, 
by  the  Council  of  Manufactures,  as  to  novelty,  but  not 
a  severe  one.  No  model  required.  If  patent  is  refused, 
which  rarely  happens,  part  of  the  fee  is  returned.  No 
yearly  taxes.  The  Government  fee  for  a  patent  of  inven- 
tion for  three  years  is  90  silver  roubles  or  $72  gold,  for  five 
years  $120  gold,  for  ten  years  $360.  The  Government  fee 
upon  a  patent  for  importation,  for  six  years,  is  $288.  Im- 
portation of  patented  thing  by  patentee  allowed.  A  proper 
charge  of  an  American  solicitor  for  a  Russian  patent  of  in- 
vention for  three  years  is  $300  gold,  for  five  years  $45°> 
and  for  ten  years  $650;  and  for  a  patent  of  importation 
for  six  years  $450.  Russia  offers  a  vast  and  remunerative 
field  to  inventors. 

Spain.  Population,  in  1864,  16,031,267;  area,  192,957 
square  miles.  Patents  are  granted  to  the  first  applicant, 
inventor  or  not.  Patents  of  invention  are  granted  for  an 
invention  not  having  been  put  in  practice  in  Spain  or  else- 
where. Patents  of  importation  granted  for  inventions 
which  have  been  worked  abroad  but  not  in  Spain.  Patents 
of  invention  are  granted  for  five,  ten,  and  fifteen  years,  as 
asked  for ;  patents  of  importation  for  five  years  only.  The 
Government  fee  for  an  invention  patent,  for  five  years,  is 
1,000  reals  or  $54,  for  ten  years  $162,  and  for  fifteen  years 
$324;  for  importation  patent,  for  five  years,  $162.  No 
examination  made  as  to  novelty  or  utility;    no  model  re- 


228  Foreign   Patents 


quired.  The  patent  must  be  worked  within  a  year  and 
a  day,  and  the  working  must  not  cease  for  that  length 
of  time.  Importation  of  patented  article  by  any  one 
allowed,  making  patent  almost  valueless.  The  proper 
charge  of  an  American  solicitor  for  a  Spanish  invention 
patent,  for  five  years,  is  $250,  for  ten  years  $350,  and  for 
fifteen  years  $575  J  for  an  importation  patent,  for  five  years, 
$350.  The  crown  can  grant  patents  for  Cuba,  but  the 
cheaper  and  better  way  is  to  apply  to  the  governor-general 
of  the  island.     Cost  the  same  as  for  Spain. 

Italy.  Population,  by  census  of  1862,  25,906,937; 
area,  109,734  square  miles.  Grants  invention  patents 
only,  and  only  to  inventors,  citizens  or  foreigners,  or  their 
assigns.  Grants  certificates  of  addition,  and  certificates 
of  reduction  in  the  nature  of  disclaimers.  Medicines  are 
not  patentable.  No  examination  as  to  novelty  or  utility; 
no  model  required.  Must  not  have  been  made  public,  in 
detail,  in  Italy;  but  the  publication  of  a  foreign  patent, 
under  a  law  requiring  it,  is  no  bar.  Duration  from  one  to 
fifteen  years,  as  requested  by  applicant;  patents  granted 
for  less  than  fifteen  years  can  be  prolonged  to  full  term. 
Patents  granted  for  five  years  or  less  must  be  worked  in  the 
first  year,  and  the  working  must  not  cease  for  a  whole  year; 
patents  granted  for  more  than  five  years  must  be  worked 
within  the  first  two  years,  and  working  must  not  cease  for 
two  consecutive  years.  Importation  of  the  patented  thing 
by  patentee  generally  tolerated,  but  not  of  right.  There 
are  two  kinds  of  fees  or  taxes,  —  proportional  and  annual. 
The  former  is  $2  per  year;  the  latter  is  $8  for  each  of  the 
first  three  years,  #15  for  each  of  the  second  three  years, 
#18  for  each  of  the  third  three  years,  $23  for  each  of  the 
fourth  three  years,  and  $28  for  each  of  the  last  three  years. 


Foreign   Patents.  229 


The  proportional  tax  for  the  whole  term  of  patent  de- 
manded must  be  paid  in  advance,  and  the  annual  tax  for 
the  first  year,  making  the  advance  Government  fee  for 
a  patent,  for  six  years,  $20,  which  is  the  advisable  term,  as 
it  gives  the  two  years  for  working,  and  can  be  prolonged  to 
fifteen.  A  fair  charge  by  an  American  solicitor  for  an 
Italian  patent  for  six  years,  including  the  proportional  tax 
for  six  years  and  the  annual  tax  for  one  year,  is  $175. 

Sweden.  Population,  by  census  of  1867,  4,195,681; 
area,  170,621  British  square  miles.  Patent  granted  to  the 
inventor  only.  Only  required  to  be  new  in  Sweden. 
Medicines,  etc.,  not  patentable.  Duration,  from  three 
months  to  fifteen  years,  at  the  pleasure  of  the  Govern- 
ment, but  expires  with  foreign  patent  expiring  previously. 
When  patented  abroad,  Swedish  patent  usually  granted  for 
five  years.  No  taxes.  Slight  examination  as  to  novelty 
and  utility.  Government  fee  a  provincial  matter,  and 
variable.  Importation  of  the  patented  article  by  any  one 
permitted,  making  a  patent  nearly  valueless:  No  model 
required.     Fair  charge  of  an  American  solicitor,  $150. 

Norway.  Population,  according  to  census  of  1865, 
1,701,478;  area,  123,297  British  square  miles.  Duration, 
not  to  exceed  ten  years.  Other  regulations  same  as  in 
Sweden,  both  countries  having  the  same  king.  Fair  charge 
of  American  solicitor  for  Norwegian  patent.  $150. 
• 

Poland.  Population,  in  1864,  5,319,362;  area,  43,240 
square  miles.  Regulations  same  in  general  as  in  Russia,  of 
which  Poland  is  a  province.  There  is  something  of  a  pre- 
liminary examination  by  Government  officers,  but  there 
are  no  fixed  rules  in   this  regard.     No  model   required. 


230  Foreign   Patents. 

Patents  granted  for  three,  five,  and  ten  years,  as  asked  for. 
Government  fee  on  patent  for  three  years  $14,  five  years 
$29,  ten  years  $60.  Patent  must  be  worked  within  the 
first  quarter  of  its  term.  The  law  does  not  forbid  the 
importation  of  the  patented  article  by  the  patentee.  A 
fair  charge  for  a  Polish  patent,  by  an  American  agent, 
would  be  $225. 

Denmark.  Population,  by  census  of  1865,  1,726,724; 
area,  15,307  square  miles.  Inventor,  native  or  foreign, 
and  first  introducers  can,  respectively,  have  patents  of 
invention  and  importation.  The  duration  of  invention 
patents  is  fixed  by  the  Government,  and  can  not  be  more 
than  twenty  years;  patents  of  importation  are  for  five 
years.  The  Government  fee  for  a  patent  to  a  single  person 
is  $12,  to  several  persons,  $24.  There  is  a  preliminary 
examination  of  some  severity.  No  model  required.  Pat- 
ent must  be  worked  within  the  first  year  and  continue 
thereafter  uninterruptedly.  Any  one  can  import  the  pat- 
ented article,  injuring  the  value  of  the  patent.  A  fair 
charge  for  a  Danish  patent,  by  an  American  solicitor, 
is  $200. 

Baden.  Population  of  the  grand-duchy  of  Baden,  by 
the  census  of  1867,  1,434,970;  area,  5,910  square  miles. 
Inventors,  native  or  foreign,  or  their  assigns  may  take  pat- 
ents. Invention  must  not  have  been  made  public  in  Baden 
or  elsewhere.  Baden  grants  patents  of  invention  and  of 
importation,  —  the  former  for  five,  ten,  or  fifteen  years; 
the  latter  expire  with  the  foreign  patent.  The  Government 
charges  are  not  invariable,  but  the  usual  amount  is  $22. 
The  five  and  ten  year  patents  can  be  extended  to  fifteen. 


Foreign   Patents.  231 


There  is  a  preliminary  examination ;  no  model  required. 
A  year  is  usually  allowed  for  working,  but  importation  is 
taken  for  working.  A  fair  charge  of  an  American  solicitor 
for  a  Baden  patent  is  from  $150  to  $200. 

Bavaria.  Population,  by  census  of  1867,  4,824,421; 
area,  29,441  square  miles.  Inventors,  native  or  foreign, 
may  obtain  patents  of  invention.  Importation  patents  are 
granted  while  the  foreign  patent  is  yet  in  force.  The 
invention  must  not  have  had  sufficient  publicity  anywhere 
to  enable  any  save  the  inventor  to  put  it  in  practice.  The 
duration  of  invention  patents  is  fifteen  years  or  less,  as  de- 
manded by  the  applicant;  importation  patents  die  with  the 
original  foreign  patent.  Patents  granted  for  less  than  fifteen 
years  can  readily  be  prolonged  from  time  to  time,  till  the 
full  term  is  reached;  and,  on  account  of  the  charges,  it  is 
best  to  take  the  patent  for  a  short  time  at  first.  Besides 
certain  charges  for  registering  and  stamping,  which  are 
small  but  variable,  the  annual  taxes  for  the  first,  second, 
and  third  years,  and  so  on,  are,  $13,  $15,  $20,  $25,  $30, 
$35>  $45 >  #55>  $67>  $75>  $87.50,  $100,  $112.50,  $125, 
$137.50;  and  these  annual  taxes  must  all  be  paid  in  ad- 
vance for  the  term  demanded.  No  model  required.  There 
is  an  examination  as  to  novelty  and  utility.  The  patent 
should  be  worked  within  a  year  antf  a  day,  though  six 
months  more  are  usually  allowed  invention  patents.  The 
law  does  not  seem  to  prevent  the  patentee  from  importing 
the  patented  article,  nor  does  it  prevent  third  parties  from 
doing  the  same,  except  when  the  patent  is  for  a  machine  or 
a  process.  A  fair  charge  of  an  American  solicitor  for  a 
Bavarian  patent  of  invention  or  importation,  for  three 
years,  is  $175,  and  for  a  prolongation,  exclusive  of  the 
Government  charges,  $25. 


232  Foreign   Patents. 


Portugal.  Population,  by  census  of  1863,  3,986,558; 
area,  36,492  square  miles.  Inventors  and  introducers  can 
take  patents,  foreigners  through  a  citizen  and  in  his  name. 
Patents  of  addition  are  also  granted.  The  duration  is  any 
term  demanded  up  to  fifteen  years.  Patents  of  introduc- 
tion, if  taken  by  another  than  the  inventor,  are  for  five 
years;  if  by  the  inventor,  the  Portuguese  patent  expires 
with  his  original  foreign  patent.  The  Government  charges 
for  a  patent  for  one  year  are  about  $50,  and  for  each  addi- 
tional year  about  $6  per  year,  to  be  paid  in  advance.  No 
model  required.  There  is  no  examination  as  to  novelty  or 
utility.  The  patent  must  be  worked  within  the  first  half 
of  its  term.  Importation  of  the  patented  thing  by  the 
patentee  is  generally  tolerated,  but  not  of  right.  A  fair 
charge  by  an  American  solicitor  for  a  Portuguese  patent, 
for  five  years,  is  $250. 

Saxony.  Population,  in  1867,  2,423,586;  area,  5,779 
square  miles.  Medicines  and  food  compounds  are  not 
patentable.  Foreigners  must  take  patent  in  the  name  of  a 
Saxon  subject.  Patents  are  granted  to  inventors  and  intro- 
ducers. Patents  of  invention  may  be  for  five  or  ten  years, 
as  demanded;  importation  patents  for  five  years  or  less. 
Government  fee  about  #37.  Invention  patents  for  five 
years  may  be  prolonged  to  ten.  Patents  must  be  worked 
within  a  year ;  a  delay  of  another  year  is  readily  procured 
for  invention  patents.  Importation  constitutes  working 
under  an  importation  patent.  Importation  of  the  pat- 
ented thing  by  patentee  allowed,  and,  when  the  invention 
is  other  than  a  machine,  a  tool,  or  a  new  mode  of  manu- 
facture, third  persons  are  not  prevented  by  the  patent  from 
importing  the  patented  thing.  No  model  required.  There 
is  an  examination  as  to  novelty  and  utility.     A  fair  charge 


Foreign  Patents.  233 


by  an  American  solicitor  for  a  Saxon  patent,  for  five  years, 
is  $150. 

Hanover.  Population,  in  1867,  385,957;  area,  2,240 
square  miles.  Inventors  and  introducers  take  patents. 
Invention  only  required  to  be  new  within  the  kingdom. 
Patents  are  generally  granted  for  five  years;  importation 
patents  may  run  ten  years,  if  the  original  foreign  patent 
runs  so  long.  The  Government  fee  is  about  $25,  not  in- 
cluding certain  stamp  and  enrollment  charges.  Five-year 
patents  can,  sometimes,  be  prolonged  to  ten.  No  model 
required.  There  is  an  examination  as  to  novelty  and 
utility.  Patent  must  be  worked  within  six  months,  but 
importation  constitutes  working.  Any  one  can  import  the 
patented  thing.  A  fair  charge  of  an  American  solicitor 
for  a  Hanoverian  patent,  for  five  years,  is  $175. 

Wurtemburg.  Population,  in  1867,  1,778,479;  area, 
5,779  square  miles.  Granted  to  inventor  or  introducer. 
Duration  not  to  exceed  ten  years;  importation  patent  ex- 
pires with  original  foreign  patent  expiring  previously.  Gov- 
ernment fees  are  annual,  taxes  varying  from  $2.75  to  $8.75 
per  year,  and  must  be  paid  in  advance  for  the  whole  term. 
Short  terms  can  be  extended  to  the  full  term.  There  is  a 
preliminary  examination,  and,  when  the  patent  is  granted, 
its  validity  can  not  be  attacked  by  a  third  party.  Patent 
must  be  worked  within  two  years,  and  must  not  be  inter- 
rupted for  two  consecutive  years.  No  model  required. 
Patentees  of  invention  patents  can  prevent  importation 
of  the  patented  thing  by  others,  but  patentees  of  importa- 
tion patents  can  not.  A  fair  charge,  by  an  American  soli- 
citor, for  a  Wurtemburg  patent,  for  five  years,  is  #175. 

Holland.     Has  no  patent  law. 
30 


234  Foreign   Patents. 


Greece.  No  special  patent  laws  exist;  but,  by  a  law 
of  1843,  the  Government  is  empowered  to  grant  patents 
for  inventions,  subject  to  the  approval  of  the  Senate.  Cost 
variable. 

Petty  German  States:  Anhalt-Dessau,  Anhalt-Bern- 
burg,  Anhalt-Coethen-Brunswick,  Bremen,  Frankfort,  Ham- 
burgh, Hesse-Cassel,  Hesse-Darmstadt,  Hesse-Homburg, 
Hohenzollern-Sigmaringen,  Lippe-Detmold,  Lippe-Schaum- 
burg,  Lubeck,  Mecklenburg-Schwerin,  Mecklenburg-Stre- 
litz,  Nassau,  Oldenburg,  Reuss-Strelitz,  Reuss-Greiz,  Sach- 
sen-Altenburg,  Sachen-Coburg-Gotha,  Schwarzburg-Sonder- 
shausen,  Schwarzburg-Rudolstadt,  Waldeck.  In  these  states 
no  special  patent  laws  exist,  but  they  grant  special  privileges 
with  reference  to  new  inventions. 

Brazil.  Population,  11,780,000;  area,  3,430,000  square 
miles.  Grants  only  patents  of  invention,  to  inventors.  The 
term  is  from  five  to  twenty  years,  fixed  by  the  Government. 
Government  fees  about  $160.  No  preliminary  examination. 
No  model  required.  Must  be  worked  within  one  year  from 
the  time  of  commercially  working  elsewhere,  and  must  not 
cease  for  a  year. 

Chili.*  Population,  2,000,000;  area,  132,609  square 
miles.  —  Peru.  Population,  2,500,000;  area,  510,100 
square  miles.  —  New  Granada.  Population,  2,794,000; 
area,  514,000  square  miles.  — These  three  countries  grant 
patents  of  invention  and  of  importation.  Duration  from 
five  to  twenty  years,  fixed  by  Government.  Government 
fees  about  $160.  No  preliminary  examination.  No  model 
required.     Importation  is  counted  as  working. 


Foreign   Patents.  235 


Paraguay.  Population,  1,337,439 ;  area,  89,252  square 
miles.  Granted  to  inventor  or  importer.  A  patentee  must 
get  the  consent  of  the  Government  to  patent  his  invention 
elsewhere.  Term,  either  five  or  ten  years.  Importation 
patent  expires  with  foreign  patent  expiring  previously. 
Government  charge  variable.  No  preliminary  examina- 
tion.    No  model  required.     Must  be  worked  in  two  years. 

Argentine  Republic.  Population,  1,465,000;  area, 
542,800  square  miles.  Patents  granted  to  inventors  or  first 
introducers.  Chemical  compounds  not  patentable.  Dura- 
tion of  invention  patents,  ten  years;  of  importation  pat- 
ents, five  years.  Government  fee  on  invention  patent, 
$540;  for  importation  patent,  #1,080.  No  preliminary 
examination.  No  model  required.  Must  be  worked  within 
a  year. 

British  Colonies.  India:  Population,  190,000,000; 
term,  fourteen  years;  solicitor's  fair  charge,  #250.  Prince 
Edward's  Island  :  Granted  only  to  residents.  Newfound- 
land: Population,  150,000  ;  term,  fourteen  years ;  granted 
to  inventor  or  assigns;  solicitor's  fair  charge,  #150. — Pat- 
ents are  also  granted  in  the  British  colonies  of  Cape  of 
Good  Hope,  Jamaica,  Barbados,  Saint  Vincent,  Trinidad, 
Mauritius,  Ceylon,  New  South  Wales,  Victoria,  South  Aus- 
tralia, Western  Australia,  British  Guiana,  New  Zealand, 
Tasmania,  and  Queensland. 

Also,  in  the  Dutch  West  Indies,  Sardinia,  and  the  Sici- 
lies; but,  as  it  is  so  little  likely  that  any  American  inventor 
will  ever  want  a  patent  in  these  countries,  it  is  useless  to 
give  here  the  details  with  reference  to  them. 


POPULATION    BY   COUNTIES 

.     OF  THE 

UNITED  STATES  of  AMERICA, 

According  to  the  Census  of  1870. 


ALABAMA 

Area,  50,7 

22  Square  Miles  ;  Total 

Population,  99G,992. 

Autauga 

11,623 

Dallas 

.  40,705 

Marshall 

....    9,871 

Baker 

6,194 

DeKalb 

.     7,126 

Mobile 

....  49,311 

Baldwin 

6,004 

Elmore 

.  14,477 

Montgomery  .... 

....  43,704 

Barbour 

23,309 

Escambia 

.    4,041 

Morgan  

....  12,187 

Bibb 

7,469 

Etowah 

.  10,109 

Monroe 

....  14,214 

Blount 

9,945 

Fayette 

.    7,136 

Perry 

....  24,975 

Bullock 

24,474 

Franklin 

.    8,006 

Pickens 

....  17,690 

Butler 

14,981 

Geneva 

.    2,959 

Pike 

....  17,423 

Calhoun 

13,980 

Greene 

.  18,399 

Randolph 

....  12,006 

Chambers 

17,562 

Hale 

.  21,792 

Russell 

....  21,636 

Cherokee 

11,132 

Henry 

.  14,191 

Sandford 

....    8,893 

Choctaw 

12,676 

Jackson  

.  19,410 

Shelby 

....  12,218 

Clark  

14,663 

Jefferson 

.  12,345 

St.  Clair 

....    9,360 

Clay 

9,560 

Lauderdale 

.  15,091 

Sumter 

....  24,109 

Cleburne 

8,017 

Lawrence 

.  16,658 

Talladega 

....  18,064 

Coffee 

6,171 

Lee 

.  21,750 

Tallapoosa 

....  16,963 

Colbert 

12,537 

Limestone. 

.  15,017 

Tuscaloosa 

....  20,081 

Conecub  

9,574 

Lowndes 

.  25,719 

Walker 

....     6.543 

Coosa 

11,945 

Macon 

.  17,727 

Washington 

....     3,912 

Covington 

4,868 

Madison 

.  31,267 

Wilcox 

....  28,377 

Crenshaw 

11,156 

Marengo 

.  26,151 

Winston 

....    4,155 

Dale 

11,325 

Marion 

.    6,059 

ARKANSAS. 

Area,  52,1 

98  Square  Miles  ;  Total 

Popnlatlor 

,  484,471. 

Arkansas 

8,268 

Green 

.    7,573 

Poinsett 

....    1,720 

Ashley 

8,042 

Hempstead 

.  13,768 

Polk 

....     3,376 

Benton 

13,831 

Hot  Springs 

.    5,877 

Pope 

....    8,386 

Boone 

7,032 

Independence 

Izard 

.  14,566 

Prairie 

....    5,604 

Bradley 

8,6-16 

.    6,806 

Pulaski 

....  32,066 

Calhoun 

3,853 

Jackson 

.    7,268 

Randolph 

....    7,466 

Carroll 

5,780 

Jefferson 

.  15,733 

St.  Francis 

....    6,714 

Chicot 

7,214 

Johnson 

.     9,152 

Saline 

....    3,911 

Clark 

11,953 

Lafayette 

.    9,139 

Scott 

....    7,483 

Columbia 

11,397 

Lawrence 

.    5,981 

Searcy 

....    5,614 

Conway 

Crawford 

8,112 

8,957 

Little  River 

.     3,236 

Sebastian 

....  12,940 

Madison 

.    8,231 

Sevier 

....    4,492 

Crittenden  .... 

3,831 

Marion 

.     3,979 

Sharpe  

....    5,400 

Craighead 

4,577 

Mississippi 

.    3,633 

Union 

....  10,571 

Cross 

3,915 

Monroe 

.     8,336 

Van  Buren 

....    5,107 

Dallas 

5,707 

Montgomery 

.     2,984 

Washington 

....  17,266 

Desha 

6,125 

Newton 

.     4,374 

White 

....  10,347 

Drew 

9,960 

Ouachita 

.  12,975 

Woodruff. 

....     6,891 

Franklin 

9,627 

Perry 

Phillips 

.    2,685 

Yell 

....    8,048 

Fulton 

4,843 

.  15,372 

Grant 

3,943 

Pike 

.    3,788 

Census  of  the  United  States. 


237 


Area, 

Alameda 24 

Alpine 

Amador 9 

Butte 11 

Calaveras 8 

Colusa 6 

Contra  Costa 8 

Del  Norte 2 

El  Dorado 10 

Fresno 

Humboldt 6 


CALIFORNIA. 

188,981  Square  Miles  ;  Total  Population,  560,247. 


237 
685 

,582 
,403 
805 
165 
461 
,022 


,140 

Inyo 1,956 

Kern 2,925 

Klamath 1,686 

Lake 2,969 

Lassen 1,327 

Los  Angelos 15,309 


Marin 6,903 

Mariposa 4,572 

Mendocino 7,545 

Merced 2,807 

Mono r....      430 

Monterev 9,876 

Napa.....'. 7,163 

Nevada 19,134 

Placer 11,3-57 

Plumas 4,489 

Sacramento 26,830 

San  Bernardino...    3,988 

San  Diego 4,951 

San  Francisco 149,473 

San  Joaquin 21,050 

San  L.  Obispo 4,772 

San  Mateo 6,635 


Santa  Barbara 7,784 

Santa  Clara 26,246 

S.ntaCruz 8,748 

Shasta 4,173 

Sierra 5,619 

Siskiyou 6,848 

Solano 16,871 

Sonoma 19,819 

Stanislaus 6,499 

Sutter 5,030 

Tehama 3,587 

Trinitv 3,213 

Tulare 4,533 

Tuolumne 8,150 

Yolo 9,899 

Yuba 10,851 


CONNECTICUT. 
Area,  4,674  Square  Miles  ;  Total  Population,  537,454. 


Fairfield 95,276 

Hartford 109,007 

Litchfield 48,727 


Middlesex 36,099 

New  Haven 121 ,257 

New  London 66,570 


Tolland 22,000 

Windham 38,518 


Kent 


DELAWARE. 

Area,  2,120  Square  Miles  ;  Total  Population,  125,015. 

..  29,804  |  New  Castle 63,515  |  Sussex  . 


31,696 


Area,  59,5 

Alachua 17,328 

Baker 1,325 

Bradford 3,671 

Brevard 1,216 

Calhoun 998 

Clay 2,098 

Columbia 7,335 

Dade 85 

Duval 11,921 

Escambia 7,817 

Franklin 1,256 

Gadsden 9,802 

Hamilton 5,749 


FLORIDA. 

&  Square  Miles  ;  Total  Population, 

Hernando 2,938 

Hillsboro 3,216 

Holmes  1,572 

Jackson 9,528 

Jefferson 13,398 

La  Fayette 1,783 

Leon 15,236 

Levy 2,018 

Liberty 1,050 

Madison 11.121 

Manatee 1,931 

Marion 10,804 

Monroe 5,657 


Area, 

Appling 5 

Baker 6 

Baldwin  10 

Banks 4 

Bartow 16 

Berrien 4 

Bibb 21 

Brooks 8 

Bryan 5, 

Bullock 5 

Burke 17 

Units 6, 

Calhoun 5 

Camden 4 


GEORGIA. 

,0OO  Square  Miles  ;  Total  Popnlatk 


Campbell 9,176 

Carroll 11,782 

Catoosa 4,409 

Charlton 1,897 

Chatham 41,279 

Chattahoochee 6,059 

Chattooga 6,902 

Cherokee 10,399 

Clarke 12,941 

Clay 

Clayton  -"".1,7 

Clinch 8,945 

Cobb 13,814 

Coffee 8^92 


187,748. 

Nassau 4,247 

Orange 2,i;>5 

Polk 3,169 

Putnam 3,821 

Santa  Rosa 3,312 

St.  John's  2,618 

Sumter 2,952 

Suwannee 3,556 

Taylor 1,458 

Volusia 1,723 

Wakulla 2,506 

Walton 3,041 

Washington 2,302 


1,184,109. 

Colquitt 1,654 

Columbia  .'. 13,529 

Coweta 15,875 

Crawford 7,"».vr 

Dade 3,033 

Dawson 4,869 

Decatur 15.1s:1, 

DeKalb 10,014 

Dooly 9,790 

Dougherty 11.517 

Early 6,998 

Echols 1,978 

Effingham 4,214 

Elbert 9,249 


238 


Census   of  the   United   States. 


Emanuel 6,134 

Fannin 5,429 

Fayette 8,221 

Floyd 17,230 

Forsyth 7,983 

Franklin 7,893 

Fulton 33,446 

Gilmer 6,644 

Glascock 2,736 

Glynn 5,376 

Gordon 9,268 

Greene 12,454 

Gwinnett 12,131 

Habersham  6,322 

Hall 9,607 

Hancock 11,317 

Haralson 4,004 

Harris 13,284 

Hart 6,783 

Heard 7,866 

Henry 10,102 

Houston 20,406 

Irwin 1,837 

Jackson 11,181 

Jasper 10,439 

Jefferson 12,190 

Johnson 2,964 

Jones 9,436 

Laurens 7,834 

Lee 9,567 


Liberty 7,688 

Lincoln 5,413 

Lowndes 8,321 

Lumpkin 5,161 

Macon 11,458 

Madison 5,227 

Marion 8,000 

Mcintosh 4,491 

Meriwether 13,756 

Miller 3,091 

Milton 4,284 

Mitchell 6,633 

Monroe  17,213 

Montgomery 3,586 

Morgan 10,696 

Murray 6,500 

Muscogee 16,663 

Newton 14,615 

Oglethorpe 11,782 

Paulding 7,639 

Pickens 5,317 

Pierce 2,778 

Pike 10,905 

Polk 7,822 

Pulaski 11,940 

Putnam 10.461 

Quitman 4,150 

Rabun 3,256 

Randolph 10,561 

Richmond 25,724 

ILLINOIS. 

Area,  55,405  Square  Miles  ;  Total  Population, 


Adams 56,362 

Alexander 10,564 

Bond 13,152 

Boone 12,942 

Brown 12,205 

Bureau 32,415 

Calhoun 6,562 

Carroll 16,705 

Cass 11,580 

Champaign  32,737 

Christian 20,363 

Clark 18,719 

Clay 15,875 

Clinton 16,285 

Cowles 25,235 

Cook 349,966 

Crawford 13,889 

Cumberland 12,223 

De  Kalb 23,265 

De  Witt 14,768 

Douglas 13,484 

DuPage 16,685 

Edgar 21,450 

Edwards 7,565 

Effingham 15,653 

Fayette 19,638 

Ford 9,103 

Franklin 12,652 

Fulton 38,201 

Gallatin 11,134 


Greene 20,277 

Grundy 14,938 

Hamilton 13,014 

Hancock 35,935 

Hardin 5,113 

Henderson 12,582 

Henry 85,506 

Iroquois 25,782 

Jackson 19,634 

Jasper 11,234 

Jefferson 17,864 

Jersey 15,054 

Jo  Daviess 27,820 

Johnson 11,248 

Kane 39,091 

Kankakee 24,352 

Kendall 12,399 

Knox  39,522 

Lake 21,014 

La  Salle 60,792 

Lawrence 12,533 

Lee 27,171 

Livingston 31,471 

Logan 23,053 

Macon 26,481 

Macoupin 32,726 

Madison 44,131 

Marion 20,622 

Marshall 16,956 

Mason 16,184 


Schley 5.129 

Scriven  9,175 

Spalding 10,205 

Stewart 14,204 

Sumter 16,559 

Talbot 11,913 

Taliaferro 4,796 

Tatnall 4,860 

Taylor 7,143 

Telfair 3.245 

Terrell 9,053 

Thomas 14,523 

Towns 2,780 

Troup 17.632 

Twiggs 8,545 

Union 5,267 

Upson 9,430 

Walker 9,925 

Walton 11,038 

Ware 2,286 

Warren 10,545 

Washington 15,842 

Wayne 2,177 

Webster 4,677 

White 4,606 

Whitfield 10,117 

Wilcox 2,439 

Wilkes 11,796 

Wilkinson  9.383 

Worth 3,778 


2,539,891. 

Massac 9,581 

McDonough 26,509 

McHenry 23,762 

McLean 53.988 

Menard 11,735 

Mercer 18,769 

Monroe 12,982 

Montgomery 25,314 

Morgan 28,463 

Moultrie 10,385 

Ogle 27,492 

Peoria 47,540 

Perry 13,723 

Piatt 10,953 

Pike 30,768 

Pope 11,437 

Pulaski 8,752 

Putnam 6,280 

Randolph 20,859 

Richland 12,803 

Rock  Island 29,783 

Saline 12,714 

Sangamon 46,352 

Schuyler 17,419 

Scott 10,530 

Shelby 25,476 

Stark 10,751 

St.  Clair 51,068 

Stephenson 30.608 

Tazewell 27,903 


Census   of   the   United   States 


239 


Union 16,518 

Vermillion 30,888 

Wabash 8,841 

Warren 23,174 


Washington 17,599 

Wayne 19,758 

White 16,846 

Whitesides 27,503 


INDIANA. 

Area,  33,809  Sqnaro  Miles  ;  Total  Population, 


Adams 11,382 

Allen 43,494 

Bartholomew 21,133 

Benton 5,615 

Blackford 6,272 

Boone 22,593 

Brown 8,681 

Carroll 16,152 

Cass 24,193 

Clarke 24,770 

Clay 19,084 

Clinton 17,330 

Crawford 9,851 

Daviess 16,747 

Dearborn 24,116 

Decatur 19,053 

DeKalb 17,167 

Delaware 19,030 

Dubois 12,597 

Elkhart 26,026 

Fayette 10,476 

Floyd 23,300 

Fountain 16,389 

Franklin 20,223 

Fulton 12,726 

Gibson 17,371 

Grant 18,487 

Greene 19,514 

Hamilton 20,882 

Hancock 15,123 

Harrison 19,913 


Hendricks 20,277 

Henry 22,986 

Howard 15,847 

Huntington 19,036 

Jackson 18,974 

Jasper 6,354 

Jay 15,000 

Jefferson 29,741 

Jennings 16,218 

Johnson 18,366 

Knox  21,562 

Kosciusko 23,531 

La  Grange 14,1-18 

Lake 12,339 

La  Porte 27,062 

Lawrence 14.628 

Madison 22,770 

Marion 71,939 

Marshall 20,211 

Martin 11,103 

Miami 21,052 

Monroe  14,168 

Montgomery 23,765 

Morgan  17,528 

Newton 5,829 

Noble 20,389 

Ohio 5,837 

Orange 13,497 

Owen  16,137 

Parke 18,166 

Perry 14,801 


Area, 

Adair 3 

Adams 4 

Allamakee 17 

Appanoose 16 

Audubon 1 

Benton 22 

Black  Hawk 21 

Boone 14 

Bremer 12 

Buchanan 17 

Buena  Vista 1 

Butler 9 

Calhoun 1 

Carroll 2 


IOWA. 

50,914  Square  Miles  ;  Total  Population, 


Cedar 19 

Cerro  Gordo 4 

Cherokee 1 

Chickasaw 10 

Clarke 8 

Clay 1 

Clayton  27 


,9S2 
,614 

,sos 

456 
.212 

154 

706 

5S  I 

528 

,034 
,5S5 
,951 
602 
151 
46 1 
731 
722 
,967 
180 
735 
52:; 
771 


Clinton 35,857 

Crawford 2,530 

Dallas 12,019 

Davis 15,565 

Decatur 12,018 

Delaware 17,4;  .2 

Des  Moines 27,256 

Dickinson 1,389 

Dubuque 88,969 

Emmett 1,392 

Fayette 16,973 

Floyd 10,768 

Franklin 4,738 

Fremont 11,174 

Greene 4,627 

Grundy 6,399 

Guthrie  7,061 

Hamilton 6,055 

Hancock 999 

Hardin 13,684 

Harrison 8,931 

Henry 21,463 


Will 43,013 

Williamson 17,329 

Winnebago 29,301 

Woodford 18,966 

l,6SO,637. 

Pike 13,779 

Porter 13,042 

Posey 19,185 

Pulaski  7.801 

Putnam 21,514 

Randolph 22,862 

Ripley 20.977 

Rush 17,626 

Scott 7,873 

Shelby 21.892 

Spencer 17,998 

Starke 3.888 

Steuben 12,854 

St.  Joseph 25,3,22 

Sullivan 18,453 

Switzerland 12,134 

Tippecanoe  33,515 

Tipton 11,953 

Union 6,341 

Vanderburg 33, 145 

Vermillion 10,840 

Vigo 33,594 

Wabash 21,305 

Warren 10,204 

Warrick 17,653 

Washington 18,495 

Wayne 34,048 

Wells 13,585 

White 10,5,54 

Whitley 14,399 


1,191,792. 

Howard 6,282 

Humboldt 2,596 

Ida 226 

Iowa 16,644 

Jackson 22,619 

Jasper 22,116 

Jefferson 17,839 

Johnson 24,898 

Jones 19,731 

Keokuk 19,434 

Kossuth 3., 351 

Lee 37,210 

Linn 28,852 

Louisa 12,877 

Lucas 10,388 

Lyon 221 

Madison 13,884 

Mahaska 22,508 

Marion 24,436 

Marshall 17,576 

Mills 8,718 

Mitchell 9,582 


240 


Census   of  the   United   States. 


Monona 3.G54 

Monroe  12,724 

Montgomery 5,934 

Muscatine 21,688 

O'Brien  715 

Page 9,975 

Palo  Alto 1,336 

Plymouth 2,199 

Pocahontas 1,446 

Polk 27,857 

Pottawattamie 16,893 


Poweshiek 15,581 

Ringgold 5,691 

Sac 1,411 

Scott 38,599 

Shelby , 2,540 

Sioux  576 

Story 11,651 

Tama 16,131 

Taylor 6,989 

Union 5,986 

Van  Buren 17,672 


Area, 

Allen 7 

Anderson  5 

Atchison 15 

Barton 

Bourbon 15 

Brown 6 

Butler 3 

Chase 1 

Cherokee 11 

Clay 2 

Cloud 2 

Coffey 6 

Cowley 1 

Crawford 8 

Davis 5 

Dickinson 3 

Doniphan 13 

Douglass 20 

Ellis 1 

Ellsworth 1 

Ford 

Franklin 10 


KANSAS. 

78,418  Square  Miles  ;  Total  Population, 


Greenwood 3,484 

Howard 2,704 

Jackson 6,053 

Jefferson 12,526 

Jewell 207 

Johnson 13,684 

Labette 9,973 

Leavenworth 32,444 

Lincoln 516 

Linn 13,174 

Lyon 8,014 

Marion 768 

Marshall 6,901 

McPherson 738 

Miami 11,725 

Mitchell 485 

Montgomery 7,564 

Morris 2,225 

Nemeha 7,339 

Neosho 10,206 

Ness 2 

7,648 


Area,  37,6* 

Adair 11,065 

Allen 10,296 

Anderson 5,449 

Ballard 12,576 

Barren 17,780 

Bath 10,145 

Boone 10,696 

Bourbon 14,863 

Boyd 8,573 

Boyle  9,515 

Bracken 11,409 

Breathit 5,672 

Breckinridge 13,440 

Bullitt 7,781 

Butler 9,904 

Caldwell 10,826 

Callaway 9,410 

Campbell 27,406 

Carroll 6,189 

Carter 7,509 

Casey 8,884 

Christian 23,227 

Clark 10,882 

Clay 8.297 


KENTUCKY. 

Square  Miles  ;  Total  Population; 

Clinton 6,497 

Crittenden 9,381 

Cumberland 7,690 

Daviess 20,714 

Edmonson 4,459 

Elliott 4,433 

Estill 9,198 

Fayette 26,656 

Fleming 13,398 

Floyd 7,877 

Franklin 15,300 

Fulton 6,161 

Gallatin 5,074 

Garrard 10.376 

Grant 9,529 

Graves 19,398 

Grayson 11,580 

Green 9,379 

Greenup 11,463 

Hancock 6,591 

Hardin 15,705 

Harlan 4,415 

Harrison 12,993 

Hart 13,687 


Wapello 22.346 

Warren 17,980 

Washington 18,952 

Wayne 11,287 

Webster 10,484 

Winnebago 1,562 

Winneshiek 23,570 

Woodbury 6,172 

Worth 2,892 

Wright 2,392 


3<H,399. 

Osborne 33 

Ottawa 2,127 

Pawnee 179 

Pottawattamie 7,848 

Republic 1,281 

Rice 5 

Rilev 5,105 

Russell 156 

Saline 4,246 

Sedgwick 1,095 

Shawnee 13,131 

Smith 66 

Sumner 22 

Trego  166 

Wabaunsee 3,362 

Wallace 538 

Washington 4,081 

Wilson 6,694 

Woodson 3,827 

Wyandotte 10,015 


1,321,011. 

Henderson 18,457 

Henry 11,066 

Hickman 8,453 

Hopkins 13,827 

Jackson 4,547 

Jefferson 118,953 

Jessamine 8,638 

John  Bell 3,731 

Johnson 7,494 

Kenton 36,096 

Knox 8,294 

La  Rue 8.235 

Laurel 6,016 

Lawrence 8,497 

Lee 3,058 

Letcher 4,608 

Lewis 9,115 

Lincoln 10,947 

Livingston 8,200 

Logan 20,429 

Lyon 6,233 

Madison 19,543 

Magoffin 4,684 

Marion 12,838 


Census  of  the  United   States 


241 


Marshall 9,455 

Mason 18,126 

McCracken 18,988 

McLean 7,614 

Meade 9,485 

Menifee 1,986 

Mercer 13,144 

Metcalfe 7,934 

Monroe 9,231 

Montgomery 7,557 

Morgan  .....*. 5975 

Muhlenburg 12,688 

Nelson 14804 

Nicholas 9,129 

Ohio 15,561 


Area, 

Ascension 11, 

Assumption 13, 

Avoyelles 12, 

Bienville 10. 

Bossier 12, 

Caddo 21, 

Calcasieu 6, 

Caldwell 4, 

Cameron 1, 

Carroll 10, 

Catahoula 8, 

Claiborne 20, 

Concordia 9, 

DeSoto 14, 

East  Baton  Rouge  17, 

East  Feliciana 13, 

Franklin 5, 

Grant 4, 


Oldham 9,027 

Owen 14,309 

Owsley 3,889 

Pendleton 14,030 

Perry 4,274 

Pike 9,562 

Powell 2,599 

Pulaski 17,670 

Robertson 5,399 

Rock  Castle 7,145 

Rowan 2,991 

Russell 5,809 

Scott 11,C07 

Shelby 15,733 

Simpson .    9,573 


LOUISIANA. 

55  Square  Miles  ;  Total  Popn 

Iberia 9 

Iberville 12, 

Jackson 7 

Jefferson 17 

Lafayette 10 

Lafourche 14, 

Livingston 4, 

Madison 8, 

Morehouse 9, 

Natchitochez 18, 

Orleans 191, 

Ouachita 11, 

Plaquemines 10, 

Point  Coupee 12, 

Rapides 18, 

Richland 5, 

Sabine 6, 

St.  Bernard 3, 


Spencer 5,956 

Taylor 8,226 

Todd 12,612 

Trigg 13,686 

Trimble 6,577 

Union 13,640 

Warren 21,742 

Washington 12,464 

Wayne 10,602 

Webster 10,937 

Whitley 8,279 

Wolfe 3,603 

Woodford 8,240 


latton,  726,015. 
,042 

,347 
,6 16 

,707 
.388 
,719 
,026 
600 
387 
265 
418 
."82 
552 
981 
015 
no 

456 

55:3 


St.  Charles 

4,857 

St.  Helena.. 

5,423 

St.  James 

10,152 

St.  John  the  Baptist  6,762 

St.  Landry 

25,553 

St.  Martin 

9,370 

St.  Mary 

13,860 

St.  Tammany 

5,586 

Tangipahoa 

7,928 

Tensas 

12,419 

Terrebonne 

12,441 

Union 

11,685 

Vermillion 

4,528" 

Washington 

3,330 

West  Baton  Rouge 

5,114 

West  Feliciana 

10,499 

Winn 

5,954 

MAINE. 

Area,  31,766  Square  Miles  ;  Total  Population,  626,915. 


Androscoggin 35,866 

Aroostook 29,609 

Cumberland 82,021 

Franklin 18,811 

Hancock 36,495 

Kennebec 53,203 


Knox  30,823 

Lincoln 25,597 

Oxford 33,488 

Penobscot 75,150 

Piscataquis 14,403 

Sagadahoc 18,803 


Somerset 34,611 

Waldo 34,522 

Washington 43,343 

York 69,174 


MASSACHUSETTS. 

Area,  7,800  Square  Miles  ;  Total  Population,  1,457,351. 


Barnstable 32,774 

Berkshire 64,827 

Bristol 102,886 

Dukes 3,787 

Essex 200,843 


Franklin 32,635 

Hampden 78,409 

Hampshire 44,388 

Middlesex 274,358 

Nantucket 4,123 


Norfolk 89,443 

Plymouth 65,365 

Suffolk 270,802 

Worcester 192,716 


MICHIGAN. 

Area,  56,243  Square  Miles  ;  Total  Population,  1,184,059. 


Alcona 696 

Allegan 32,105 

Alpena 2,756 

Antrim 1,985 

Barry  22,199 

Bay 15,900 


Benzie 2,184 

Berrien 35,104 

Branch 262226 

Calhoun 36,569 

Cass 21,094 

Charlevoix 1,724 


Cheboygan 2,196 

Chippewa 1,689 

Clare 366 

Clinton 22,845 

Delta 2.542 

Eaton 25.171 


3i 


242 


Census  of  the  United  States 


Emmet 1,211 

Genesee 33,900 

Grand  Traverse...    4,443 

Gratiot 11,810 

Hillsdale 31,684 

Houghton 13,879 

Huron 9,049 

Ingham 25,268 

Ionia 27,681 

Iosco 3,163 

Isabella 4,113 

Jackson 36,047 

Kalamazoo 32,054 

Kalkaska 424 

Kent 50,403 

Keweenaw 4,205 

Lake 548 

Lapeer 21,345 


Leelanaw 4,576 

Lenawee 45,595 

Livingston 19,336 

Mackinac 1,716 

Macomb 27,616 

Manistee 6,074 

Manitou 891 

Marquette 15,033 

Mason 3,263 

Mecosta 5,642 

Menominee 1,791 

Midland 3,285 

Missaukee 130 

Monroe 27,483 

Montcalm 13,629 

Muskegon 14,894 

Newaygo 7,294 

Oakland 40,867 


Oceana 7,222 

Ogemaw 12 

Ontonagon 2,845 

Osceola 2,093 

Oscoda 70 

Ottawa 26,651 

Presque  Isle 355 

Saginaw 39,097 

Sanilac 14,562 

Shiawassee 20,858 

St.  Clair 36,661 

St.  Joseph 26,275 

Tuscola 13,714 

VanBuren 28,829 

Washtenaw  41,434 

Wayne 119,038 

Wexford 650 


MARYLAND. 
Area,  11,124  Square  Miles  5  Total  Population,  780,894. 


Alleghany 38,536 

Anne  Arundel 24,457 

Baltimore 330,741 

Calvert 9,865 

Caroline 12,101 

Carroll 28,619 

Cecil 25,874 

Charles 15,738 


Area, 

Aitkin 

Anoka 3, 

Becker 

Beltrami 

Benton 1, 

Big  Stone 

Blue  Earth 17, 

Brown 6, 

Carlton 

Carver 11 


Chippewa 1, 

Chisago 4 

Clay 

Cottonwood 

Crow  Wing 

Dakota 16 

Dodge 8 

Douglass 4 

Faribault 9 

Fillmore 24 

Freeborn 10 

Goodhue 22 

Grant  


Dorchester..., 19,458 

Frederick 47,572 

Harford 22,005 

Howard 14,150 

Kent 17,102 

Montgomery 20,563 

Prince  George's...  21,138 
Queen 16,171 


MINNESOTA. 

74  Square  Wiles  ;  Total  Population,  439,706. 


Saint  Mary's 14,944 

Somerset 18,190 

Talbot 16,137 

Washington 34,712 

Wicomico 15,802 

Worcester 16,419 


Hennepin 21,566 

Houston 14,936 

Isanti 2,035 

Itasca 96 

Jackson 1,825 

Kanabec 93 

Kandiyohi 1,760 

Lac  qui  Parle 145 

Lake 135 

Le  Sueur 11,607 

Martin 3,867 

McLeod 5,643 

Meeker 6090 

MilleLac 1,109 

Monongalia 3,160 

Morrison 1,681 

Mower 10,447 

Murray 209 

Nicollet 8,362 

Nobles 117 

Olmsted 19,793 

Otter  Tail 1,968 

Pembina 64 

Pine 648 


Pope 

....    2,691 

Ramsey 

....  23,085 

Redwood  

....    1,829 

Renville 

....     3,219 

Rice 

....  16,083 

Rock 

138 

Scott 

....  11,042 

Sherburne 

....     2.0.50 

Sibley 

....     6.725 

Stearns 

....  14,206 

Steele  

....    8,271 

Stevens 

....       174 

St.  Louis 

....    4,561 

Todd 

....     2,036 

13 

Wabashaw 

....  15,859 

Wadena 

6 

Waseca 

....    7,861 

Washington.... 

....  11,809 

Watonwan 

....     2,426 

Wilkin 

295 

Winona 

....  22,319 

Wright 

....     9,457 

MISSISSIPPI. 

Area,  47,156  Square  Miles  ;  Total  Population,  827,922. 


Adams 19,084 

Alcorn 10,431 

Amite 10,973 


Bolivar 9,732 

Calhoun 10,561 

Carroll 21.047 


Attala 14,776    Chickasaw 19,899 


Choctaw 16,988 

Claiborne 13,586 

Clark 7,505 

Coahoma 7,144 


Census  of  the  United  States. 


243 


Copiah 20,608 

Covington 4,753 

DeSoto 32,021 

Franklin 7,498 

Greene 2,038 

Grenada 10,571 

Hancock 4,239 

Harrison 5,795 

Hinds 30,488 

Holmes 19,370 

Issaquena 6,887 

Itawamba 7,812 

Jackson 4,362 

Jasper 10,884 

Jeflerson 13,848 

Jones 3,313 

Kemper 12,920 

Lafayette 18,802 


Area,  67,8* 

Adair 11,448 

Andrew 15,137 

Atchison 8,440 

Audrain 12,307 

Barry 10,373 

Barton 5,087 

Bates 15,960 

Benton 11,322 

Bollinger 8,162 

Boone 20,765 

Buchanan 35.109 

Butler 4,298 

Caldwell 11,390 

Callaway 19,202 

Camden 6,108 

Cape  Girardieu 17,558 

Carroll 17,446 

Carter 1,455 

Cass 19,296 

Cedar 9,474 

Chariton 19,136 

Christian 6,707 

Clarke 13,067 

Clay 15,564 

Clinton 14,063 

Cole 10,292 

Cooper 20,692 

Crawford 7,982 

Dade 8,683 

Dallas 8,383 

Daviess 14,410 

DeKalb 9,858 

Dent 6,357 

Douglass 3,915 

Dunklin 5,982 

Franklin 30,098 

Gasconade 10,093 

Gentry 11,607 


Lauderdale 13,462 

Lawrence 6,620 

Leake 8,496 

Lee 15,955 

Lincoln 10,184 

Lowndes 30,502 

Madison 20,948 

Marion 4,211 

Marshall 29,416 

Monroe  22,631 

Neshoba 7,439 

Newton 10,067 

Noxubee 20,905 

Oktibbeha... 14,891 

Panola 20,754 

Perry 2,694 

Pike 11,303 

Pontotoc 12,525 

MISSOURI. 

I  Square  Miles  ;  Tetal  Population, 

Greene 21,549 

Grundy 10,567 

Harrison 14,635 

Henry 17,401 

Hickory 6,452 

Holt 11,652 

Howard 17,233 

Howell 4,218 

Iron 6,278 

Jackson 55,041 

Jasper 14,928 

Jeflerson 15,380 

Johnson 24,648 

Knox  10,974 

Laclede 9,380 

Lafayette 22,623 

Lawrence 13,067 

Lewis 15,114 

Lincoln 15,960 

Linn 15,900 

Livingston 16,730 

Macon 23,230 

Madison 5,849 

Maries 5,916 

Marion 23,780 

McDonald 5,226 

Mercer 11,557 

Miller 6,616 

Mississippi 4,982 

Moniteau 11,375 

Monroe 17,149 

Montgomery 10,405 

Morgan 8,434 

New  Madrid 6,3">7 

Newton 12,821 

Nodaway 14,751 

Oregon 3,287 

Osage 10,793 


Prentiss 9,348 

Rankin 12,977 

Scott 7,847 

Simpson 5,718 

Smith 7,126 

Sunflower 5,015 

Tallahatchie 7,852 

Tippah 20,727 

Tishemingo 7,350 

Tunica 5,358 

Warren 26,769 

Washington 14,569 

Wayne 4,206 

Wilkinson 12,705 

Winston 8,984 

Yalabusha 13,254 

Yazoo 17,279 


1,721,295. 

Ozark 3,363 

Pemiscot 2,059 

Perry 9,877 

Pettis 18,706 

Phelps 10,506 

Pike 23,076 

Platte 17,352 

Polk 12,445 

Pulaski 4,714 

Putnam 11,217 

Ralls 10,510 

Randolph 15,908 

Ray 18.700 

Reynolds 3,756 

Ripley 3,175 

Saline 21,672 

Schuyler 8,820 

Scotland 10,670 

Scott 7,317 

Shannon 2,339 

Shelby 10,119 

St.  Charles 21,304 

St.  Clare 6,742 

St.  Genevieve 8,384 

St.  Francois 9,742 

St.  Louis 351,189 

Stoddard 8,535 

Stone 3,253 

Sullivan 11,907 

Taney 4,407 

Texas 9,618 

Vernon 11,247 

Warren 9,673 

Washington 11,719 

Wayne 6,068 

Webster 10,434 

Worth 5,004 

Wright 5,684 


Adams . 


NEBRASKA. 

Area,  75,095  Square  Miles  ;  Total  Population,  122,993. 

19  I  Blackbird 31 1  Buffalo.. 


244 


Census  of  the   United   States. 


Burt 2,847 

Butler 1,290 

Cass 8,151 

Cedar 1,032 

Cheyenne 190 

Clay 54 

Colfax 1,424 

Cuming 2,964 

Dakota 2,040 

Dawson 103 

Dixon 1,345 


Dodge 

Douglass .. 
Fillmore  .. 
Franklin .. 

Gage 

Grant 

Hall 

Hamilton 
Harrison .. 


4,212 

19,982 

238 

26 

3,359 

484 

1,057 

130 

C31 


Jackson 9 

Jefferson 2,440 

Johnson 3,429 

Kearney 58 

Lancaster 7,074 

L'Eau  qui  Court...  261 

Lincoln 17 

Lyon 78 

Madison 1,133 

Merrick 557 

Monroe 235 

Nemaha 7,593 

Nuckolls 8 

Otoe 12,345 

Pawnee 4,171 

Pierce 152 

Platte 1,899 

Polk 136 

Richardson 9,780 

Saline 3,106 


Sarpy 

2,913 

Saunders 

4,547 

Seward 

2,953 

Stanton  

636 

Taylor 

97 

Washington 

4,452 

Wavne 

182 

Webster 

16 

York 

604 

Unorganized  N.W. 

Territory 

52 

Unorganized  Ter- 

ritory   west    of 

Madison  County 

183 

Winnebago  Indian 

reservation 

31 

Pawnee    Indian 

reservation 

44 

NEVADA. 

Area,  112,000  Square  Miles  ;  Total  Population,  42,401. 


Churchill 196 

Douglas 1,215 

Elko 3,447 

Esmeralda 1,553 

Humboldt 1,916 


Lander 2,815 

Lincoln 2,985 

Lvon 1,837 

Nye 1,087 

Ormsby 3,668 


Roop 133 

Storey 11,359 

Washoe  3,091 

White  Pine 7,189 


NEW    HAMPSHIRE. 

Area,  0,280  Square  Miles  ;  Total  Population,  818,300. 


Belknap 17,681 

Carroll 17,332 

Cheshire 27,265 

Coos 14,932 


Grafton  39,103 

Hillsborough 64,238 

Merrimack 42,151 

Rockingham 47,297 


Strafford 
Sullivan.. 


30,243 
18,058 


NEW   JERSEY. 
Area,  3,320  Square  Miles  ;  Total  Population,  006,000. 


Atlantic 14,093 

Bergen 30,122 

Burlington 53,639 

Camden 46,193 

Cape  May 8,349 

Cumberland 34,665 

143,839 


Gloucester 21,562 

Hudson 129,067 

Hunterdon 36,963 

Mercer 46,386 

Middlesex 45,029 

Monmouth 46,195 

Morris 43,137 


Albany 133,052 

Alleghany 40,814 

Broome 44,103 

Cattaraugus 43,909 

Cayuga 59,550 

Chautauqua 59,327 

Chemung 35,281 

Chenango 40,564 

Clinton 47.947 

Columbia 47,044 

Cortland 25.173 

Delaware 42,972 

Dutchess 74,041 

Erie 178,699 

29,042 


NEW   YORK. 

Area,  4T,000  Square  Miles  $  Total  Population, 

Franklin 30,271 

Fulton 27,064 

Genesee 31,606 

Greene 31,832 

Hamilton 2,960 

Herkimer 39,929 

Jefferson 65,415 

Kings 419,921 

Lewis 28,699 

Livingston 38,309 

Madison 43,522 

Monroe 117,868 

Montgomery 34,457 

New  York 942,292 

Niagara 50,437 


Ocean 13,628 

Passaic 46,416 

Salem 23,940 

Somerset 23,510 

Sussex 23,168 

Union 41,859 

Warren 34,336 


4,382,760. 

Oneida 110,008 

Onondaga 104,183 

Ontario  45,108 

Orange 80,902 

Orleans  27,689 

Oswego 77,941 

Otsego 48,967 

Putnam 15,420 

Queens 73,803 

Rensselaer 99,549 

Richmond 33,029 

Rockland 25,213 

Saratoga 51,529 

Schenectady 21,347 

Schoharie 33,340 


Census   of  the   United   States. 


245 


Schuyler 18,989 

Seneca 27,828 

Steuben 67,717 

st.  Lawrence 84*826 

Suffolk 46,924 


Sullivan 34,550 

Tioga  30,572 

Tompkins 33,178 

Ulster 84,075 

Warren 22,592 


Washington 49,508 

Wayne 47,710 

Westchester 131,848 

Wyoming 29,164 

Yates 19,595 


NORTH    CAROLINA. 

Area,  50,704  Square  Miles  ;  Total  Population, 


Alamance 11,874 

Alexander 6,808 

Alleghany 3,091 

Anson 12,428 

Ashe 9,573 

Beaufort 13,011 

Bertie 12,950 

Bladen 12,831 

Brunswick 7,754 

Buncombe 15,412 

Burke 9,777 

Cabarrus 11,954 

Caldwell 8,470 

Camden 5,301 

Carteret 9,010 

Caswell 10,081 

Catawba 10,984 

Chatham 19,723 

Cherokee 8,080 

Chowan 6,450 

Clay 2,461 

Cleaveland 12,696 

Columbus 8,474 

Craven 20,516 

Cumberland 17,035 

Currituck 5,131 

Dare 2,778 

Davidson 17,414 

Davie 9,020 

Duplin 15,542 


Edgecombe  22,970 

Forsyth 13,050 

Franklin 14,134 

Gaston 12,002 

Gates 7,724 

Granville 24,831 

Greene 8,087 

Guilford 21,730 

Halifax 20,408 

Harnnett 8,895 

Haywood 7,921 

Henderson 7,706 

Hertford 9,273 

Hyde 6,445 

Iredell 16,931 

Jackson 6,683 

Johnston 16,897 

Jones 5,002 

Lenoir 10,434 

Lincoln, 9,573 

Macon 6,615 

Madison 8,192 

Martin 9,047 

McDowell 7,592 

Mecklenburg 24,299 

Mitchell 4,705 

Montgomery 7,487 

Moore 12,040 

Nash 11,077 

New  Hanover 27,978 


1,071,301. 

Northampton 14,749 

Onslow 7,509 

Orange 17,507 

Pasquotank 8,131 

Perquimans 7,945 

Person 11,170 

Pitt 17,276 

Polk 4,319 

Randolph 17,551 

Richmond 12,882 

Robeson 16,262 

Rockingham 15,708 

Rowan 10,810 

Rutherford 13,121 

Sampson 16,436 

Stanley 8,315 

Stokes 11,208 

Surry 11,252 

Transylvania 3,536 

Tyrrell 4,173 

Union 12,217 

Wake  35,617 

Warren 17,768 

Washington 6,516 

Watauga 5,287 

Wayne 18,144 

Wilkes 15,539 

Wilson 12,258 

Yadkin 10,097 

Yancy 5,909 


OHIO. 

Area,  39,904  Square  Miles  ;  Total  Population, 


Adams 20,750 

Allen 23,023 

Ashland 21,933 

Ashtabula 32,517 

Athens 23,708 

Auglaize 20,041 

Belmont 39,714 

Brown 30,802 

Butler 39,912 

Carroll 14,491 

Champaign  24,188 

Clark 32,070 

Clermont 34,208 

Clinton 21,914 

Columbiana 38,299 

Coshocton 28,600 

Cra  w  l'ord 25,556 

Cuyahoga 132,010 

Darke 32,278 

Defiance 15,719 

Delaware 25,175 

Erie 28,188 


Fairfield 31,138 

Fayette 17,170 

Franklin 03,019 

Fulton 17,789 

Gallia 25,545 

Geauga 14,190 

Greene 28,038 

Guernsey 23,838 

Hamilton 260,370 

Hancock 23,847 

Hardin 18,714 

Harrison 18,682 

Henry 14,028 

Highland  29,133 

Hocking 17,925 

Holmes  ..• 18,177 

Huron  28,532 

Jackson 21,7r>9 

Jefferson 29,188 

Knox  26,338 

Lake 15,935 

Lawrence 31,380 


2,005,200. 

Licking 33,750 

Logan 23,028 

Lorain 30,308 

Lucas 46,722 

Madison 15,633 

Mahoning 31,001 

Marion 16,184 

Medina 20,092 

Meigs  31,40") 

Mercer 17,254 

Miami 32,740 

Monroe 2:>,77(.i 

Montgomery 64,006 

Morgan  20,363 

Morrow 18,583 

Muskingum 44,880 

Noble 19,949 

Ottawa 13,864 

Paulding 8,544 

Perry 18,458 

Pickaway 24,875 

Pike 15,447 


246 


Census   of  the   United   States. 


Portage  24,584 

Preble 21,809 

Putnam 17,081 

Richland 32,516 

Ross 37,097 

Sandusky 25,503 

Scioto 29,302 

Seneca 30,827 


Shelby 20,748 

Stark 52,508 

Summit 34,674 

Trumbull 38,659 

Tuscarawas 53,840 

Union 18,730 

Van  Wert 15,823 

Vinton 15,027 


Warren 26.689 

Washington 40,609 

Wayne 35,116 

Williams 20,991 

Wood  24,596 

Wyandot 18,553 


OREGON. 

Area,  102,600  Square  Miles  ;  Total  Population,  90,923. 


Baker 2,804 

Benton 4,584 

Clackamas 5,993 

Clatsop 1,255 

Columbia 863 

Coos 1,644 

Curry  504 

Douglas 6,066 


Grant  2,251 

Jackson 4,778 

Josephine 1,204 

Lane 6,426 

Linn 8,717 

Marion 9,965 

Multnomah 11,510 

Polk 4,701 


PENNSYLVANIA. 

Area,  46,000  Sqnare  Miles  ;  Total  Population, 


Adams 30,315 

Alleghany 262,204 

Armstrong 43,382 

Beaver 36,148 

Bedford 29,635 

Berks  106,701 

Blair 38,051 

Bradford 53,204 

Bucks 64,836 

Butler 36,510 

Cambria 36,569 

Cameron 4,273 

Carbon 28,144 

Centre 34,418 

Chester 77,805 

Clarion 26,537 

Clearfield 25,741 

Clinton 23,211 

Columbia 28,766 

Crawford 63,832 

Cumberland 43,912 

Dauphin 60,740 


Delaware 39,403 

Elk 8,488 

Erie 65,973 

Fayette 43,284 

Forest 4,010 

Franklin 45,365 

Fulton 9,360 

Greene 25,887 

Huntingdon 31,251 

Indiana 36,138 

Jefferson 21,656 

Juniata 17,390 

Lancaster 121,340 

Lawrence 27,298 

Lebanon 34,096 

Lehigh 56,796 

Luzerne 160,755 

Lycoming 47,626 

McKean 8,825 

Mercer 49,977 

Mifflin 17,508 

Monroe 18,362 


Tillamook 408 

Umatilla 2,916 

Union 2,552 

Wasco 2,509 

Washington 4,261 

Yam  Hill 5,012 


3,521,791. 

Montgomery 81,612 

Montour 15,344 

Northampton 61,432 

Northumberland..  41,444 

Perry 25,447 

Philadelphia 674,022 

Pike... 8,436 

Potter 11,265 

Schuylkill 116,428 

Snyder 15,606 

Somerset 28,226 

Sullivan 6,191 

Susquehanna  37,523 

Tioga 35,097 

Union 15,565 

Venango 47,925 

Warren  23,897 

Washington 48,483 

Wavne 33,188 

Westmoreland 58,719 

Wyoming 14,585 

York 76,134 


RHODE    ISLAND. 

Area,  1,306  Square  Miles  ;  Total  Population,  217,353. 

Bristol 9,421  I  Newport 20,050    Washington 20,097 

Kent 18,595  |  Providence 149,190  | 

SOUTH    CAROLINA. 

Area,  29,385  Square  Miles  ;  Total  Population,  705,606. 


Abbeville 31,129 

Anderson 24,049 

Barnwell 35,724 

Beaufort 34,359 

Charleston 88,863 

Chester 18,805 

Chesterfield 10,584 

Clarendon 14,038 

Colleton 25,410 

Darlington 26,243 

Edgefield 42,486 


Fairfield 19,888 

Georgetown 16,161 

Greenville 22,262 

Horry 10,721 

Kershaw 11,754 

Lancaster 12,087 

Laurens 22,536 

Lexington 12,988 

Marion 22,160 

Marlborough 11,814 

Newberry 20,775 


Oconee 10,536 

Orangeburg 16,865 

Pickens 10,269 

Richland 23,025 

Spartanburg 25,784 

Sumter 25,268 

Union 19,248 

Williamsburg 15,489 

York 24,286 


Census   of   the   United   States. 


247 


TENNESSEE. 

Area,  45,000  Square  Miles  ;  Total  Population, 


Anderson 8,704 

Bedford 24,383 

Benton 8,234 

Bledsoe 4,870 

Blount 14,237 

Bradley 11,652 

Campbell 7,445 

Cannon 10,502 

Carroll 19,447 

Carter 7,909 

Cheatham 6,678 

Claiborne 9,321 

Cocke 12,458 

Coffee 10,237 

Cumberland 3,461 

Davidson 62,897 

Decatur 7,772 

DeKalb 11,425 

Dickson 9,340 

Dyer 13,706 

Fayette 26,145 

Fentress 4,717 

Franklin.. 14,970 

Gibson 25,666 

Giles 32,413 

Grainger 12,421 

Greene 21,668 

Grundy  3,250 

Hamilton 17,241 


Hancock 7,148 

Hardeman 18,074 

Hardin 11,768 

Hawkins 15,837 

Haywood  25,094 

Henderson 14,217 

Henry 20,380 

Hickman 9,853 

Humphreys 9,326 

Jackson 12,583 

Jefferson 19,476 

Johnson 5,852 

Knox  28,990 

Lake 2,428 

Lauderdale 10,838 

Lawrence 7,601 

Lewis 1,986 

Lincoln 28,050 

Macon 6,633 

Madison 23,480 

Marion 6,841 

Marshall 16,207 

Maury 36,289 

McMinn 13,969 

McNairy 12,726 

Meigs  4,511 

Monroe 12,589 

Montgomery 24,747 

Morgan  2,969 


1,258,520. 

Obion 15,584 

Overton 11,297 

Perry 6,925 

Polk 7,369 

Putnam 8,698 

Rhea 5,538 

Roane 15,622 

Robertson 16.166 

Rutherford 83,289 

Scott 4,054 

Sequatchie 2,385 

Sevier 11,028 

Shelby 76,378 

Smith 15.994 

Stewart 12,019 

Sullivan 13,136 

Sumner 23,711 

Tipton 14,884 

Union 7,605 

VanBuren 2,725 

Warren 12,714 

Washington 16,317 

Wayne 10,209 

Weaklev 20,755 

White 9,375 

Williamson 25,328 

Wilson 25,881 


Area,  237, 

Anderson  9,229 

Angelina 3,985 

Atascosa 2,915 

Austin 15,087 

Bandera 649 

Bastrop  12,290 

Bee 1,082 

Bell 9,771 

Bexar 16,043 

Bexar  District 1,077 

Blanco 1,187 

Bosque 4,981 

Bowie 4,684 

Brazoria 7,627 

Brazos 9,205 

Brown 544 

Burleson 8,072 

Burnet 3,686 

Caldwell 6,572 

Calhoun 3,443 

Cameron 10,999 

Chambers 1,503 

Cherokee 11,079 

Coleman 847 

Collin 14,018 

Colorado 8,826 

Comal 5,288 

Comanche l.ooi 

Cook 5,315 


TEXAS. 

504  Square  Miles  ;  Total 

Coryell 

Dallas 

Davis  

Demmit 

Denton 

De  Witt 

Duval 

Eastland 

Ellis 

El  Paso 

Ensinal 

Erath  

Falls 

Fannin 

Fayette 

Fort  Bend 

Freestone  

Frio 

Galveston 

Gillespie 

Goliad 

Gonzales 

Grayson 

Grimes 

(Juadaloupe 

Hamilton  

Hardin 

Harris 

Harrison 


Popnlatic 

4,124 

13,314 

8,875 

109 

7,251 

6,443 

1,083 

88 

7,514 

3,671 

427 

1,801 

9,851 

13,207 

16,863 

7,114 

8,139 

309 

15,290 

3,566 

3,628 

8,951 

1 1,387 

18,218 

7,282 

7:'.:; 

1,460 

17,375 

18,241 


.,  818,579. 

Hays 4,088 

Henderson 6,786 

Hidalgo 2,387 

Hill 7,453 

Hood 2,585 

Hop*kins 12,651 

Houston 8,147 

Hunt 10,291 

Jack 694 

Jackson 2,278 

Jasper 4,218 

Jefferson 1,906 

Johnson 4,923 

Karnes 1,705 

Kaufman 6,895 

Kendall 1,536 

Kerr 1,042 

Kimble 72 

Kinney 1,204 

Lamar. 15,790 

Lampasas 1,84  I 

La  Salle 69 

Lavaca 9,168 

Leon 6,528 

Liberty 4,414 

Limestone 8,591 

Live  Oak 

Llano 1,879 

Madison 4.061 


248 


Census   of   the   United   States 


Marion 8,562 

Mason 678 

Matagorda 3,377 

Maverick 1,951 

McCulloch... 173 

McLennan 13,500 

McMullen 230 

Medina 2,078 

Menard 667 

Milam 8.984 

Montague 890 

Montgomery 6,483 

Nacogdoches 9,614 

Navarro 8,879 

Newton 2,187 

Neuces 3,975 

Orange 1,255 

Panola 10,119 


Parker 4,186 

Polk  8,707 

Presidio 1,686 

Red  River 10,653 

Refugio 2,324 

Robertson 9,990 

Rusk 16,916 

Sabine 3,256 

San  Augustine 4,196 

San  Patricio 602 

San  Saba 1,425 

Shackleford 455 

Shelby 5,732 

Smith 16,532 

Starr 4,154 

Stephens 330 

Tarrant 5,788 

Titus 11,339 


Travis 13,153 

Trinity 4,141 

Tyler 5,010 

Upshur 12,039 

Uvalde 851 

Van  Zandt 6,494 

Victoria 4,860 

Walker 9,776 

Washington 23,104 

Webb 2,615 

Wharton 3,426 

Williamson 6,366 

Wilson 2,556 

Wise 1,450 

Wood 6,894 

Young 135 

Zapata 1,488 

Zavala 133 


VERMONT. 

Area,  10,212  Square  Miles  ;  Total  Population,  830,551. 


Addison 23,484 

Bennington 21,325 

Caledonia 22,247 

Chittenden 36,480 

6,811 


Franklin 30,291 

Grand  Isle 4,082 

Lamoille 12,448 

Orange 23,090 

Orleans  21,035 


Rutland 40,651 

Washington 26,508 

Windham 26,036 

Windsor 36,063 


VIRGINIA. 

Area,  38,352  Square  Miles  ;  Total  Population, 


Accomac 20,409 

Albemarle 27,544 

Alexandria 16,755 

Alleghany 3,074 

Amelia 9,878 

Amherst 14,900 

Appomattox 8,950 

Augusta 28,763 

Bath 3,795 

Bedford 25,327 

Bland 4,000 

Botetourt 11,829 

Brunswick 13,427 

Buchanan 3,777 

Buckingham 13,371 

Campbell 28,384 

Caroline 15,128 

Carroll 9,147 

Charles  City 4,975 

Charlotte 14,513 

Chesterfield 18,470 

Clarke 6,670 

Craig 2,942 

Culpepper 12,227 

Cumberland 8,142 

Dinwiddie 30,702 

Elizabeth  City 8,303 

Essex 9,927 

Fairfax 12,952 

Fauquier 19,690 

Floyd 9,824 

Fluvanna 9,875 

Franklin 18,264 


Frederick 

Giles 

Gloucester 

Goochland 

Grayson 

Greene 

Greenville 

Halifax 

Hanover 

Henrico 

Henry 

Highland 

Isle  of  Wight 

James  City 

King  and  Queen. 

King  George 

King  William 

Lancaster 

Lee 

Loudon  

Louisa 

Lunenburg 

Madison 

Matthews 

Mecklenburg 

Middlesex 

Montgomery 

Nansemond 

Nelson 

New  Kent 

Norfolk 

Northampton 

Northumberland ., 


16,596 

5,875 

10,211 

10,313 

9,587 

4,034 

6,362 

27,828 

16,455 

66,179 

12,303 

4,151 

8,320 

4,425 

9,709 

5,742 

7,515 

5,355 

13,268 

20,929 

16,332 

10,403 

8,670 

6,200 

21,318 

4,981 

12,556 

11,576 

13,898 

4,381 

46,702 

8,046 

8,863 


1,225,163. 

Nottoway 9,291 

Orange 10,396 

Page 8,462 

Patrick 10,161 

Pittsylvania 31,343 

Powhatan 7,667 

Prince  Edward....  12,004 

Prince  George 7,820 

Princess  Anne 8,273 

Prince  William...    7,504 

Pulaski 6,538 

Rappahannock 8,261 

Richmond 6,503 

Roanoke 9,350 

Rockbridge 16,058 

Rockingham 23,668 

Russell 11,103 

Scott 13,036 

Shenandoah 14,936 

Smyth 8,898 

Southampton 12.285 

Spottsylvania 11,728 

Stafford 6,420 

Surry 5,585 

Sussex 7,885 

Tazewell 10,791 

Warren 5,716 

Warwick 1,672 

Washington 16,816 

Westmoreland 7,682 

Wise 4,785 

Wythe 11,611 

York 7,198 


Census  of  the  United   States 


249 


Area, 

Barbour 10, 

Berkeley 14, 

Boone 4 

Braxton 6, 

Brooke 5, 

Cabell 6, 

Calhoun 2 

Clay 2, 

Doddridge 7 

Fayette 6; 

Gilmer 4 

Grant 4 

Greenbrier 11 

Hampshire 7 

Hancock 4 

Hardy 5 

Harrison 16 

Jackson 10 


WEST   VIRGINIA. 

23,000  Square  Miles  ;  Total  Population,  442,014. 


Jefferson 13,219 

Kanawha 22,3-19 

Lewis 10,175 

Lincoln 5,0">3 

Logan 5,124 

Marion 12,107 

Marshall 14,941 

Mason 15,978 

McDowell 1,952 

Mercer 7,064 

Mineral 6,332 

Monongalia 13,547 

Monroe 11,124 

Morgan 4,315 

Nicholas 4,458 

Ohio 28,831 

Pendleton 6,455 

Pleasants 3,012 


Pocahontas 4, 

Preston 14, 

Putnam 7, 

Raleigh 3, 

Randolph 5, 

Ritchie 9, 

Roane 7, 

Taylor 9 

Tucker 1 

Tyler 7 

Upshur 8 

Wayne 7 

Webster 1 

Wetzel 8 

Wirt 4 

Wood 19 

Wyoming 


067 
555 
Till 
673 
563 
,055 
232 
367 
,907 
,832 
,023 
,852 
730 
595 
804 
,000 
,171 


WISCONSIN. 
Area,  53,924  Square  Miles  ;  Total  Population, 


Adams 6,601 

Ashland 221 

Barron 538 

Bayfield 344 

Brown 25,168 

Buffalo 11,123 

Burnett 706 

Calumet 12,335 

Chippewa 8,311 

Clark 3,450 

Columbia 28.802 

Crawford 13,075 

Dane 53,0% 

Dodge 47,035 

Door 4,919 

Douglas 1,122 

Dunn 9.488 

Eau  Claire 10,709 

Fond  du  Lac 46,273 

Grant 37,979 


Green 23,611 

Green  Lake 13,195 

Iowa 24,544 

Jackson 7,687 

Jefferson 34,040 

Juneau 12,372 

Kenosha 13,147 

Kewaunee 10,128 

LaCrosse 20.297 

La  Fayette 22,659 

Manitowoc 33,364 

Marathon 5,885 

Marquette 8,056 

Milwaukee 89,930 

Monroe  16,550 

Oconto 8,321 

Outagamie 18,430 

Ozaukee 15,564 

Pepin 4,659 

Pierce 9,958 


1,054,670. 

Polk 3,422 

Portage 10,634 

Racine 26,740 

Richland 15,731 

Rock 39,030 

Sauk 23,860 

Shawanaw 3,166 

Sheboygan 31,749 

St.  Croix 11,035 

Trempeleau 10,732 

Vernon 18,645 

Walworth 25,972 

Washington 23,919 

Waukesha 28,274 

Waupacca 15,539 

Waushara 11,279 

Winnebago 37,279 

Wood 3,912 


TERRITORIES. 


Mohave 


ARIZONA. 

Area,  113,916  Squaro  Miles  5  Total  Population,  9,658. 

..      179  I  Pima 5,716  j  Yuma... 

I  Yavapai 2,142  | 

COLORADO. 

Area,  104,500  Square  Miles  ;  Total  Population,  39,S64. 


1,621   ' 


Arapahoe 6,829 

Bent 602 

Boulder 1,939 

Clear  Creek 1,596 

Conejos  2,504 

Costilla 1,779 

Douglas 1,388 


El  Paso 987 

Fremont 1,064 

Gilpin 5,490 

Greenwood 510 

Huerfano  2,250 

Jefferson 2,392 

Lake 522 


Larimer 838 

Las  Animas 4,276 

Park 447 

Pueblo 2,265 

Saguache 304 

Summit 258 

Weld 1,636 


32 


250 


Census  of  the  United  States. 


Bon  Homme 

Brookings 

Buffalo 

Charles  Mix.. 

Clay 

Deuel 


DAKOTA. 

Area,  50,932  Square  Miles  ;  Total  Population,  11,1  SI. 


608 
163 
246 
152 
2,621 


Hutchinson 37 

Jayne 5 

Lincoln 712 

Minnehaha 355 

Pembina 1,213 

Todd 337 


Union 3,507 

Yankton 2,097 

Unorganized  por- 
tion of  Territory  2,091 


DISTRICT    OF   COLUMBIA. 
Area,  60  Square  Miles  ;  Total  Population,  131,700. 

Georgetown  City..  11,384  |  Washington  City.109,199  |  Remainder  of  Dis. 


l.ii": 


IDAHO. 

Area,  80,294  Square  Miles  ;  Total  Population,  14,999. 


Ada 

2,675 

Alturas 

Boise 

689 

3,834 

Idaho 849 

Lemhi 988 

Nez  Perces 1,607 


Oneida 1,922 

Owehee 1,713 

Shoshone 725 


Beaver  Head., 

Big  Horn 

Choteau 

Dawson 


MONTANA. 

Area,  143,776  Square  Miles  ;  Total  Population,  20,595. 


722 

38 

517 

177 


Deer  Lodge 4,367 

Gallatin 1,578 

Jefferson 1,531 

Lewis  and  Clarke..  5,040 


Madison 2,684 

Meagher 1,387 

Missoula 2,554 


NEW   MEXICO. 

Area,  121,201  Square  Miles  ;  Total  Population,  91,874. 


Bernalillo 7,591 

Colfax 1,992 

Dona-Ana 5,864 

Grant 1,143 

Lincoln 1,803 


Mora 8,056 

Rio  Arriba 9,204 

San  Miguel 16,058 

Santa  Ana 1,599 

Santa  Fe 10,769 


Socorro 6,603 

Taos 12,079 

Valencia 9,093 


UTAH. 

Area,  84,470  Square  Miles  ;  Total  Population,  86,786. 


Beaver 2,007 

Box  Elder 4,855 

Cache 8,229 

Davis 4,459 

Iron 2,277 

Juab 2,034 

Kane 1,513 


Millard 2,753 

Morgan 1,972 

Piute 82 

Rich 1,955 

Rio  Virgin 450 

Salt  Lake 18,337 

San  Pete 6,786 


Sevier 19 

Summit 2,512 

Tooele 2,177 

Utah 12,203 

Wasatch 1,244 

Washington 3,064 

Weber 7,858 


WASHINGTON. 
Area,  69,994  Square  Miles  ;  Total  Population,  23,955. 


Chehalis 401 

Clallam 408 

Clarke 3,081 

Cowlitz 730 

Island 626 

Jefferson 1,268 

King 2,120 


329 


289 


Klikitat 

Lewis 

Mason 

Pacific 738 

Pierce 1,409 

Skamania 133 

Snohomish 599 


Kitsap 866    Stevens 


Thurston 2,246 

Wahkiakum 270 

Walla-Walla 5,300 

Whatcom  534 

Yakima 432 

The  Disputed  Isl- 
ands   554 


Census  of  the  United   States.         251 


WYOMING. 
Area,  97,883  Square  Miles  ;  Total  Population,  9,118. 

Albany 2,021  I  Laramie 2,957  I  Uintah, 

Carbon 1,368    Sweetwater 1,916  j 


856 


The  total  for  the  States  is 38,113,253 

The  total  for  the  Territories  is 442,730 


Grand  total 38,555; 


ONE  HUNDRED  PRINCIPAL  CITIES. 


New  York,  N.  Y.... 942,292 
Philadelphia,  Pa..674,022 
Brooklyn,  N.Y.... 396,099 

St.  Louis,  Mo 310,864 

Chicago,  111 298,9V/ 

Baltimore,  Md 267,354 

Boston,  Mass 250,526 

Cincinnati,  Ohio..216,239 
New  Orleans,  La..l61,418 

San  Francisco 149,473 

Buffalo,  N.  Y 117,714 

Washington,  D..C..109.199 

Newark,  N.J 105,059 

Louisville,  Ky 100,753 

Cleveland,  Ohio...  92,829 

Pittsburgh,  Pa 86,076 

Jersey  City,  N.J...  92,546 

Detroit,  Mich 79,577 

Milwaukee,  Wis...  71,440 

Albany,  N.Y 09,442 

Providence 68,904 

Rochester 62,386 

Allegheny,  Pa 53,180 

Richmond,  Va 51,038 

New  Haven,  Ct 50,840 

Charleston,  S.C...  48,956 

Troy,  N.Y 46,465 

Syracuse,  N.  Y 43,051 

Worcester,  Mass...  41,105 

Lowell,  Mass 40,928 

Memphis,  Tenn...  40,226 
Cambridge,  Mass..  39,634 

Hartford,  Ct 37,180 

Indianapolis,  Ind.  86,565 


CENSUS    OF     I870- 

Scranton,  Pa 35,092 

Reading,  Pa 33,930 

Columbus,  Ohio 33,509 

Paterson,  N.J 33,579 

Dayton,  Ohio 30,473 

Kansas  City,  Mo.. ..32,260 

Mobile,  Ala 32,034 

Portland,  Me 31,414 

Wilmington,  Del... 30,841 
Lawrence,  Mass. ...  28,021 

Toledo,  Ohio 31,584 

Charlestown,  Mass.  28,323 

Lynn,  Mass 28,233 

Fall  River,  Mass 26,766 

Springfield,  Mass...26,703 
Nashville,  Tenn.. ..25,865 

Covington,  Ky 24,505 

Salem,  Mass 24,117 

Quincy,Ill 24,053 

Manchester,  N.  H...23.536 

Harrisburg,  Pa 23,104 

Trenton,  N.J 22,874 

Peoria,  111 22,849 

Evansville,  Ind 21,830 

New  Bedford,  Mass.21,320 

Oswego,  N.Y 20,910 

Elizabeth,  N.  J 20,832 

Lancaster,  Pa 20,233 

Savannah,  Ga 28,235 

Hoboken,  N.J 20.297 

Poughkeepsie,  N.Y.20.080 

Camden,  N.J 20,045 

Davenport,  la 20,038 

St.  Paul,  Minn 20,031 


Bridgeport,  Ct 19,960 

Erie,  Pa 19,646 

Wheeling,  W.  Va...l9,282 

Norfolk,  Va 19,229 

Taunton,  Mass 18,629 

Chelsea,  Mass 18,547 

Dubuque,  la 18,434 

Leavenworth,  Ks... 17,873 
Fort  Wayne,  Ind.  ...17,718 

Springfield,  111 17,364 

Auburn.  N.  Y 17,225 

Newburgh,  N.  Y.... 17,014 

St.  Joseph,  Mo 19,565 

Petersburgh,  Va 18,950 

Atlanta.  Ga 21,789 

Norwich,  Ct 16,653 

Sacramento,  Cal 16,283 

Omaha,  Neb 16.083 

Elmira,  N.Y 15,863 

Gloucester,  Mass 15,389 

Cohoes,  N.  Y 15,357 

New  Albany,  Ind...l5,396 
N.  Brunswick,  N.J.  15,058 
Terre  Haute,  Ind.. .16,403 

Bangor,  Me 18,289 

Newport,  Ky 15,087 

GrandRapids,Mch.l6,507 

Augusta,  Ga 15,389 

Burlington.  Vt 14,387 

Alexandria,  Va 13,570 

Sandusky,  Ohio 13,000 

Lewiston.  Me 13,600 


INDEX 


MANUAL  OF  PATENT  LAW. 

Page. 

Abandoned  Experiments,  Prior 40 

Abandonment 73 

—  After  Conception  and  before  Reduction  to  Practice 73 

—  After  Reduction  to  Practice  and  before  Application 74 

—  After  Application  and  before  Grant  of  Patent 77 

—  After  Patent  Granted 78 

Abandonment,  Evidence  of 78 

Aggregation,  Combination  versus 32 

Ambiguity  in  Description Ill 

Ambiguity  in  the  Claim 115 

Application  for  Patent 105 

Appeals 120 

Art,  An 15 

Assignment,  An 85 

Assignment  by  Insolvent 87 

Bearing  of  Utility  upon  Novelty 37 

Can  a  Principle  be  Patented? 79 

Caveats 102 

Claim,  Ambiguity  in  the 115 

Claim,  Nature  of  the 116 

Composition  of  Matter 18 

Combinations 28 

Combinations,  Equivalents  in 28 

Combination  versus  Aggregation 32 

Conception  of  an  Invention 62 

Damages 146 

Description,  Ambiguity  in Ill 

Defenses 147 

Design  Patents,  Extension  of. 154 

Design  Patents 166 

Diligence,  Reasonable 63 

Disclaimers 126 

Disclaim,  Who  May 128 

Disclaimer,  Unreasonable  Delay  in  Filing 128 


Index. 


253 


Page. 

Disclaimer  During  Suit 130 

Disclaimer,  Nature  of 180 

Double  Use 26 

Drawing,  The 107 

Employer  and  Employee 101 

Equivalents , 23 

Equivalents  In  Combination 28 

Evidence  of  Abandonment,  The 78 

Experiments,  Prior  Abandoned 40 

Extension 152 

Extension  of  Design  Patents 154 

Fact,  Question  of. 150 

Form,  Size,  and  Proportions 33 

Fokms 169 

Form  No.  1,  Assignment  of  Entire  Interest  before  Issue— by  Inventor 169 

—  No.  2,  Assignment  of  Partial  Interest  before  Issue— by  Inventor 170 

—  No.  3,  Assignment  of  Entire  Interest  after  Issue— by  Inventor 171 

—  No.  4,  Assignment  of  Partial  Interest  after  Issue— by  Inventor 172 

—  No.  5,  Assignment  of  Partial  Interest  after  Issue— by  Assignee 172 

—  No. -,  Grant— by  Joint  Patentees 173 

—  No.  6,  Mortgage  of  Patent 175 

—  No.  7,  License— Shop  Right 176 

—  No.  8,  License — Shop  Right,  Assignable  and  Limited 177 

—  No.  9,  License  (not  exclusive),  with  Royalty 177 

—  No.  10,  License  (exclusive),  with  Royalty 179 

—  No.  11,  Articles  of  Association.....*. 181 

—  No.  12,  Power  of  Attorney  to  Sell  Rights 183 

—  No.  13,  Power  of  Attorney  to  Sell  Rights  (restricted) 184 

—  No.  14,  Agreement  to  Accompany  No.  13 186 

—  No.  15,  Revocation  of  Power  of  Attorney 187 

—  No.  16,  Power  of  Attorney  to  Sell  Rights,  C.O.D 187 

—  No.  17,  Contract  for  Future  Grant 189 

Grant,  A 86 

Identity 21 

Invention,  Prior 56 

Invention,  Conception  of  an 62 

Inventions,  Joinder  of. 95 

Insolvent,  Assignment  by 87 

Interests  in  Patents,  Undivided 90 

Inventors,  Joinder  of 98 

Inventors,  Scientific  and  Skilled  Aid  to 9<s 

Interferences 132 

Infringement 138 

Infringement  Suits 142 

Injunctions,  Perpetual 144 

Injunctions,  Provisional 145 

Joinder  of  Inventions 96 


254  Index. 

Page. 

Joinder  of  Inventors 98 

Jurisdiction  (of  patent  causes) 142 

Law  and  Fact,  Questions  of '....  149 

Law,  Questions  of 149 

Licenses 91 

Machine,  A 16 

Manufacture,  A 17 

Mortgage  of  Patents 93 

Model,  The 108 

Nature  of  a  Patent  Privilege,  The 7 

Nature  of  the  Claim 116 

Nature  of  a  Disclaimer 130 

Novelty 19 

Novelty,  Tests  of 35 

Novelty,  Bearing  of  Utility  upon 37 

Oath,  The 108 

Patent  Privilege,  The  Nature  of  a 7 

Patent  Law,  The  Policy  of  the 10 

Patent  is  a  Contract,  A 11 

Patents,  Undivided  Interests  in 90 

Patents,  Mortgage  of 93 

Patents,  Extension  of  Design 154 

Patents,  Design 166 

Patentable  Subject-Matter 13 

Patent  Office  Procedure  (upon  applications) 119 

Patent  Office  Procedure  (upon  extensions) 155 

Petition,  The 107 

Perpetual  Injunctions 144 

Proportions,  Form,  Size,  and 33 

Prior  Abandoned  Experiments 40 

Prior  Use 47 

Prior  Publication 53 

Prior  Invention 56 

Practice,  Reduction  to 64 

Principle  be  Patented,  Can  a 79 

Provisional  Injunctions 145 

Public  Use,  Two  Years' 64 

Public  Use 68 

Questions  of  Law  and  Fact 149 

Questions  of  Law 149 

Questions  of  Fact 150 

Reasonable  Diligence 63 

Reduction  to  Practice 64 

Recording  (of  Assignments,  etc.) 89 

Re-issues  122 

Scientific  and  Skilled  Aid  to  Inventors 98 

Size  and  Proportions,  Form 33 


Index.  255 


Page. 

Specification,  The 109 

Subject-Matter,  Patentable 13 

Suits,  Infringement 142 

Tests  of  Novelty 35 

Title,  The 85 

Two  Years'  Public  Use 64 

Undivided  Interests  in  Patents 90 

Use,  Double 26 

Use,  Prior 47 

Use,  Public 68 

Utility  upon  Novelty,  Bearing  of. 37 

Utility 44 

Utility,  Absolute 44 

Utility,  Comparative 45 

Warranty  of  Title 91 

SALE  OF  PATENTS. 

Advertising,  Newspaper t 213 

Advertisement,  Forms  for 214,  216 

Agents,  Itinerant 217 

Brokers,  Patent 195 

Capital  Required 203 

Circular,  Sale  by 208 

Circular,  Form  for 210 

Companies,  Stock 218 

Cost,  First 200 

First  Cost 200 

Form  for  Circular  to  Sell  Patent 210 

Form  for  Letter  to  accompany  Circular 212 

Form  for  Advertisements 214,  216 

In  General 193 

Itinerant  Agents 217 

Letter  to  accompany  Circular 212 

Market,  The 202 

Methods  of  Sale n 208 

Models 198 

Newspaper  Advertising 213 

Patent  Brokers 195 

Patent  Swindlers 198 

Personal' Solicitation 215 

Preliminary  to  Undertaking  Sales 198 

Price  to  be  Asked  for  Patent 203 

Profit,  The 200 

Rights,  Value  of  Territorial 204 

Rights,  Shop 206 

Royalties 207 


256-  Index. 


Page. 

Sales,  Preliminary  to  Undertaking 204 

Sale,  Methods  of 208 

Shop  Rights  206 

Solicitation,  Personal 215 

Stock  Companies 218 

Swindlers,  Patent 198 

Territorial  Rights,  Value  of 204 

FOREIGN  PATENTS. 

SYNOPSIS   OF   LAWS   AND    OTHER    DATA. 

Argentine  Republic 235 

Austria  and  Hungary 225 

Baden 230 

Bavaria 231 

Belgium 224 

British  Colonies 235 

Brazil 234 

Canada 221 

Chili 234 

Denmark 230 

France 223 

German  States 234 

Great  Britain 222 

Greece 234 

Hanover 233 

Holland 233 

Italy 228 

New  Granada 234 

Norway 229 

Paraguay 234 

Peru 234 

Poland 229 

Portugal 232 

Prussia 225 

Russia 227 

Saxony 232 

Spain 227 

Sweden 229 

Wurtemburg 233 

CENSUS. 

Census  of  the  States,  in  alphabetical  order 236-249 

Census  of  the  Territories,  in  alphabetical  order 249-251 

One  Hundred  Principal  Cities 251 


It 


